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Volum
me 2, Numbeer 1
Winter
W
2011
Contents
C
ART
TICLES
Politiical Recodin
ng of the Con
ntemporary Celebrity
C
annd the First A
Amendment
David
d Tan
Antittrust & the Bowl
B
Championship Seriies
Natha
aniel Grow
ght in the Copyright Rye: Freeing Firrst Amendm
ment Interestss from the C
Constraints off
Caug
the Traditional
T
View
V
Arlen
n W. Langvardt & Tara E.
E Langvard
dt
Biting the Hand That
T Feeds: Why the Atttempt to Imppose Additioonal Perform
mance Fees oon
iTunees is a Search for Dollars Without Seense
Jessee A. Bland
The Americans
A
with
w Disabilities Act, Thee United Staates Anti-Dooping Agencyy, and the
Efforrt Toward an
n Equal Oppo
ortunity: A Case
C
Study oof the Unitedd States Antti-Doping
Agen
ncy v. Georg
ge Hartman Matter
M
Traviis Tygart & Anthony
A
R. Ten
T Haagen
Volum
me 2, Numbeer 1
Winter
W
2011
Contents
C
ART
TICLES
Politiical Recodin
ng of the Con
ntemporary Celebrity
C
annd the First A
Amendment
David
d Tan
Antittrust & the Bowl
B
Championship Seriies
Natha
aniel Grow
1
553
ght in the Copyright Rye: Freeing Firrst Amendm
ment Interestss from the C
Constraints off
Caug
the Traditional
T
View
V
999
Arlen
n W. Langvardt & Tara E.
E Langvard
dt
Biting the Hand That
T Feeds: Why the Atttempt to Imppose Additioonal Perform
mance Fees oon
1557
iTunees is a Search for Dollars Without Seense
Jessee A. Bland
The Americans
A
with
w Disabilities Act, Thee United Staates Anti-Dooping Agencyy, and the
Efforrt Toward an
n Equal Oppo
ortunity: A Case
C
Study oof the Unitedd States Antti-Doping
Agen
ncy v. Georg
ge Hartman Matter
M
1999
Traviis Tygart & Anthony
A
R. Ten
T Haagen
EDITO
ORIAL BOAR
RD
Ed
ditor in Chief
Josh
J
Podoll
Executtive Editor
Ben Glicksman
G
Exeecutive Editor
Abig
gail E. Hacklerr
E
Executive Editoor
M
Michael J. Mozzes
Submisssions Chairs
Jeremy
y Campbell
David
d J. Kiefer
Ann
nie Smith
Prod
duction Chair
Zach
hary Rosenthall
T
Technical Chaiirs
Robin Achenn
T
Trisha Ananiaddes
M
Michael Saltzm
man
Facullty Liaison
Jeffrey M.
M Monhait
On
nline Editor
Brrent Bernell
SSymposium Chaair
A
Annie Villanueeva
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ham Funk
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M Monhait
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Arrticle Editors
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D
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Editors
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m L. Goodmann
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Miles C. Wileey
Harvard Journal of Sports & Entertainment Law
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Whole Edition (Do Not Delete)
2/7/2011 9:49 AM
Issue 1
1
Political Recoding of the Contemporary Celebrity and
the First Amendment
David Tan*
ABSTRACT
If the celebrity semiotic sign is recognized to represent the values of a
majoritarian public, then the debate and opposition to these encoded ideals
may be expressed by using the same signs in a “recoded” manner, and such
counterpublic uses can therefore be categorized as “political speech.”
Through an analysis of right of publicity claims, this Article suggests that in
order for political speech to be given adequate breathing space, it would be
beneficial to understand how the writings of Roland Barthes, Stuart Hall,
Richard Dyer, and other cultural scholars can contribute to the articulation
of a robust First Amendment defense regarding the uses of celebrity
iconography.
TABLE OF CONTENTS
I. INTRODUCTION ...................................................................................... 2
II. OVERVIEW OF THE FIRST AMENDMENT ............................................... 8
A. Goals and Theories of the First Amendment ........................................ 8 B. Scope of Freedom of Speech ............................................................... 12 III. THE FIRST AMENDMENT DEFENSE IN A RIGHT OF PUBLICITY CLAIM
........................................................................................................... 17 A. Limited Guidance from the U.S. Supreme Court ................................ 19 B. Judicial Approaches ............................................................................ 21 1. Direct Balancing Approach in Russen and Cardtoons.................... 23 2. Transformative Elements Test in Comedy III ................................. 25 3. Predominant Purpose Test in Doe ................................................... 28 C. Interim Conclusions ............................................................................ 31 IV. IDENTITY POLITICS AND THE CELEBRITY: A CULTURAL STUDIES
*
PhD (Melbourne), LLM (Harvard), LLB BCom (Melbourne). Assistant Professor,
Faculty of Law, National University of Singapore. I would like to express my heartfelt
appreciation to Professors Andrew Christie and Andrew Kenyon at the University of
Melbourne for their insight comments and advice on earlier drafts, and to acknowledge the
research assistance of Matthew Dresden and Shawn Pelsinger. This article is based in part
on a doctoral dissertation completed at the Faculty of Law, University of Melbourne.
Copyright © 2011 by the President and Fellows of Harvard College.
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Harvard Journal of Sports & Entertainment Law / Vol. 2
PERSPECTIVE .................................................................................... 31 A. The Celebrity Personality as a Political Site of Interpretive Practice
and Contested Meanings ..................................................................... 32 B. Using Celebrity Signs within First Amendment Doctrine ................... 37 1. Rethinking the Use of the Celebrity Sign as Political Speech ........ 37 2. Revisiting the Current Judicial Approaches.................................... 41 a. Direct Balancing Approach ......................................................... 44 b. Transformative Elements Test .................................................... 46 c. Predominant Purpose Test........................................................... 48 V. SUMMARY & CONCLUSIONS ................................................................. 50
I. INTRODUCTION
The American flag is infused with symbolic values of nationhood.1 A
burning cross connotes racial hostility emblematic of Ku Klux Klan
ideology.2 The use of an image of a celebrity—like Oprah Winfrey or Tiger
Woods—on a t-shirt may also possess sufficient communicative elements to
convey “a particularized message . . . [clearly] understood by those who
viewed it.”3 This Article argues that an expressive use of the celebrity
persona, depending on its content, form, and context, may be categorized as
“political speech” protected by the First Amendment. While links between
the contemporary celebrity and political speech have been raised in existing
scholarship that draws on cultural studies, this Article presents an original
interdisciplinary contribution to First Amendment jurisprudence by utilizing
cultural studies differently from most postmodern scholars who argue
against the legal recognition of a right of publicity.
Interdisciplinarity has become an influential force in legal studies, and
its advantages have been well canvassed.4 However, some critiques can
operate at a level of abstraction that does not allow any meaningful
contribution to First Amendment doctrine, while others can commit to one
to a reductionism that ignores key aspects of the First Amendment ethos.5
Rather than resort to interdisciplinarity to argue for greater limits on free
speech rights,6 this Article proposes that free speech interests may be
1
E.g., Texas v. Johnson, 491 U.S. 397, 404–05 (1989); United States v. Eichman, 496
U.S. 310, 316–18 (1990).
2
E.g., R.A.V. v. City of St. Paul, Minn., 505 U.S. 377, 432 (1992); Virginia v. Black, 538
U.S. 343, 356–57, 363, 389–91 (2003).
3
Spence v. Washington, 418 U.S. 405, 410–11 (1974).
4
E.g., MATTHEW D. BUNKER, CRITIQUING FREE SPEECH: FIRST AMENDMENT THEORY AND
THE CHALLENGE OF INTERDISCIPLINARITY i, xii–xiii (2001).
5
Id. at 184.
6
Legal scholar Kathleen Sullivan had dubbed these interdisciplinary challenges “free
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3
augmented by a pragmatic understanding of semiotics that seeks to attain a
“wide reflective equilibrium [that is] firmly grounded in constitutional
reality.”7
The right of publicity, broadly defined as the “inherent right of every
human being to control the commercial use of his or her identity,”8 has been
well-established in the United States for over fifty years.9 It protects the
burgeoning “associative value” that celebrities bring to products and
services.10 If a plaintiff succeeds in proving that he or she has been
identified by the defendant’s use and that the defendant has appropriated the
associative value of his or her identity, the plaintiff still may have to face
the formidable argument by the defendant that the unauthorized commercial
use is nevertheless protected by the First Amendment. In the absence of
clear U.S. Supreme Court precedent, circuit and state courts have been
struggling to articulate a comprehensive standard to resolve the clash
between the right of publicity—widely recognized as a private property
right—and free speech values as enshrined in the First Amendment. This
has led commentators to propose a number of possible tests to resolve these
competing claims,11 with significant lamentation that the current state of the
speech wars.” See Kathleen Sullivan, Free Speech Wars, 48 S.M.U. L. REV. 203 (1994).
7
BUNKER, supra note 4, at 188.
8
J. THOMAS MCCARTHY, THE RIGHTS OF PUBLICITY AND PRIVACY § 3:1 (2d ed. 2000).
The right of publicity is articulated in the Restatement (Third) of Unfair Competition as
follows: “[o]ne who appropriates the commercial value of a person’s identity by using
without consent the person’s name, likeness, or other indicia of identity for purposes of
trade is subject to liability.” RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 46 (1995).
The right of publicity action is available to all claimants, celebrities and non-celebrities.
However, due to the highly lucrative commercial value associated with the celebrity
identity, most claims are brought by celebrities like Tiger Woods, Dustin Hoffman, Johnny
Carson, Bette Midler, and professional sports league athletes for unauthorized uses of their
identities. E.g., ETW Corp. v. Jireh Publ’g, Inc., 332 F.3d 915 (6th Cir. 2003); Hoffman v.
Capital Cities/ABC, Inc., 255 F.3d 1180 (9th Cir. 2001); Midler v. Ford Motor Co., 849
F.2d 460 (9th Cir. 1988); Carson v. Here’s Johnny Portable Toilets, Inc., 698 F.2d 831 (6th
Cir. 1983); Doe v. TCI Cablevision, 110 S.W.3d 363 (Mo. 2003); Wendt v. Host Int’l, Inc.,
125 F.3d 806 (9th Cir. 1997); Cardtoons, L.C. v. Major League Baseball Players Ass’n, 95
F.3d 959 (10th Cir. 1996).
9
It was first recognized by the Second Circuit in 1953 that baseball players had a “right of
publicity” in their images. Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc., 202
F.2d 866, 868 (2d Cir. 1953). In the only right of publicity case ever to reach the U.S.
Supreme Court, the court affirmed the recognition of such an actionable right. Zacchini v.
Scripps-Howard Broad. Co., 433 U.S. 562 (1977).
10
Sheldon W. Halpern, The Right of Publicity: Maturation of an Independent Right
Protecting the Associative Value of Personality, 46 HASTINGS L.J. 853, 856, 859-60
(1995).
11
E.g., Gloria Franke, The Right of Publicity vs the First Amendment: Will One Test Ever
Capture the Starring Role?, 79 S. CALIF. L. REV. 945 (2006); David M. Schlachter,
Adjudicating the Right of Publicity in Three Easy Steps, 14 J.L. & POL’Y 471 (2006); Jason
4
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First Amendment defense is “a confusing morass of inconsistent,
incomplete, or mutually exclusive approaches, tests, and standards.”12 It is
important to recognize that this Article does not purport to resolve all the
issues regarding the interaction of the right of publicity with the First
Amendment. Its original contribution to First Amendment jurisprudence is
to assess how cultural studies can contribute to legal analysis when a
celebrity’s persona is appropriated for expressive uses in identity politics.
This Article maintains that one can find significant support in cultural
studies for an argument that such expressive uses qualify for the highest
level of First Amendment protection as political speech.
According to Richard Dyer and many other cultural studies scholars,
the celebrity is a semiotic sign that embodies particular meanings for the
majoritarian public. Richard Dyer’s extensive work on the movie star has
been consistently hailed as being highly influential in the contemporary
study of the meaning of celebrities in society. Celebrities can “represent
typical ways of behaving, feeling and thinking in contemporary society,
ways that have been socially, culturally, historically constructed.”13 In
building on Dyer’s arguments in examining the celebrity as a form of
cultural power and its significance in identity formation, David Marshall
observes that celebrities function as stable configurations of collective
identity formations and act as “icons of democracy and democratic will.”14
The courts have also noted that celebrities have become “common points of
reference for millions of individuals who may never interact with one
K. Levine, Can the Right of Publicity Afford Free Speech? A New Right of Publicity Test
for First Amendment Cases, 27 HASTINGS COMM. & ENT. L.J. 171 (2004); W. Mack
Webner & Leigh Ann Lindquist, Transformation: The Bright Line between Commercial
Publicity Rights and the First Amendment, 37 AKRON L. REV. 171 (2004); Eugene Volokh,
Freedom of Speech and the Right of Publicity, 40 HOUS. L. REV. 903 (2003); Mark S. Lee,
Agents of Chaos: Judicial Confusion in Defining the Right of Publicity-Free Speech
Interface, 23 LOY. L.A. ENT. L. REV. 471 (2003); Roberta Rosenthal Kwall, The Right of
Publicity vs. the First Amendment: A Property and Liability Rule Analysis, 70 IND. L.J. 47
(1994).
12
Franke, id. at 946. See also Gil Peles, The Right of Publicity Gone Wild, 11 UCLA
ENT. L. REV. 301, 302 (2004).
13
RICHARD DYER, HEAVENLY BODIES: FILM STARS AND SOCIETY 15-16 (2d ed. 2004)
[hereinafter HEAVENLY BODIES]. See also RICHARD DYER, STARS 3 (1979) [hereinafter
STARS] (discussing how Hollywood, through its representation of movie stars, can
reproduce the “dominant ideology of Western society”).
14
P. DAVID MARSHALL, CELEBRITY AND POWER: FAME IN CONTEMPORARY CULTURE
246 (1997). See also Christine Geraghty, Re-examining Stardom: Questions of Texts,
Bodies and Performance, in STARDOM AND CELEBRITY: A READER 98, 105 (Sean
Redmond & Su Holmes eds., 2007).
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5
another, but who share, by virtue of their participation in a mediated culture
[as the audience], a common experience and a collective memory.”15
As illustrated in Roland Barthes’s work, Mythologies,16 a particularly
well-known individual, like Oprah Winfrey (the signifier), may be viewed
as a sign that denotes “celebrity” (the signified). The widespread media
narratives and other forms of commercial and noncommercial circulation of
the celebrity sign also result in a particular celebrity sign garnering certain
connotations which make it distinctive vis-à-vis other signs.17 Thus a
celebrity sign like Oprah Winfrey is able to differentiate itself from other
celebrity signs with an ascribed set of connotations and “develops into a
metalanguage and becomes a significant resource for cultural expression
and critique.”18
Referring to Barthes’s seminal work,19 Stuart Hall discusses the politics
of signification20 and how ideological discourses of a particular society are
classified and framed through semiotic signs within a “pragmatic circle of
knowledge.”21 In Barthesian terms, the celebrity image is seen as a “cultural
narrative” or signifier that is synonymous with the dominant culture.22 Due
to the meticulously constructed public personae of many celebrities—
particularly the movie stars and sports icons—the semiotic signs of these
well-known individuals are usually “decoded” by the audience to represent
a defined cluster of meanings. While movie stars are often represented as
objects of aspiration, glamour, and desire, the celebrity athlete signifies
heroism, human transcendence, and a love for the pure authentic game.
The celebrity, as a widely recognized cultural sign, can impel the
public who identify with such attributed ideological values to consume the
celebrity itself as a commodity (e.g. by watching the movies of a particular
actor) or products associated with the celebrity (e.g. by purchasing
celebrity-endorsed products). On the other hand, the celebrity semiotic sign,
15
JOHN B. THOMPSON, IDEOLOGY AND MODERN CULTURE: CRITICAL SOCIAL THEORY IN
ERA OF MASS COMMUNICATION 163 (1990). See also citations of Thompson in ETW
Corp., Inc., 332 F.3d at 933; Cardtoons, 95 F.3d at 972.
16
ROLAND BARTHES, MYTHOLOGIES 110–11 (Annette Lavers trans., 1972). See also
Jason Bosland, The Culture of Trade Marks: An Alternative Cultural Theory Perspective,
10 MEDIA & ARTS L. REV. 99, 106 (2005).
17
For a similar argument in relation to trademark, see Barton Beebe, The Semiotic
Analysis of Trademark Law, 51 UCLA L. REV. 621 (2004).
18
Bosland, supra note 16, at 107.
19
BARTHES, supra note 16.
20
Stuart Hall, The Rediscovery of “Ideology”: Return of the Repressed in Media Studies,
in CULTURE, SOCIETY AND THE MEDIA 56, 70–74 (Michael Gurevitch et al. eds., 1982).
21
Id. at 74.
22
PATRICK FUERY & KELLI FUERY, VISUAL CULTURES AND CRITICAL THEORY 93, 101
(2003).
THE
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as a result of its publicly identifiable encodings, also presents rich
opportunities for alternative codings to challenge these “typical ways of
behaving, feeling and thinking in contemporary society”23 representative of
majoritarian ideals. Celebrities can have an ideological function of not only
reiterating dominant values, but also concealing prevalent contradictions or
social problems. More generally, cultural scholars have argued that
“identities can function as point of identification and attachment only
because of their capacity to exclude, to leave out, to render ‘outside’
abjected.”24 This theme of popular subcultural resistance permeates the bulk
of contemporary cultural studies.25 What significance do all these
observations have for the First Amendment and the right of publicity?
Generally perceived to be a property right akin to an intellectual
property right,26 the right of publicity has been invoked mainly by
celebrities to prevent unauthorized commercial uses of various aspects of
their personae. The relevance of cultural studies here to the right of
publicity doctrine is the observation that different groups in society can use
particular celebrity images in a variety of ways to represent their cultural
identities and convey their political ideologies.27 Hence the structural
domination of a white Anglo-Saxon heterosexual male social identity that
occupies a privileged public identity suggests that other identities organized
around being non-white, homosexual, or female will have socially
subordinate positions. Other exemplars based on different combinations of
race, class, gender, athleticism, and sexual desirability also create multiple
privileged social identities each valuing a particular ideological position
over another. Thus a particular celebrity who is symbolic of a privileged
public identity can be seen to represent a majoritarian ideological
position—a form of “frozen speech”28—and is therefore open to a recoding
23
DYER, HEAVENLY BODIES, supra note 13, at 15–16.
Stuart Hall, Introduction: Who Needs “Identity?”, in QUESTIONS OF CULTURAL
IDENTITY 1, 5 (Stuart Hall & Paul Du Gay eds., 1996) (emphasis in original). See also
Stuart Hall, The Local and the Global: Globalization and Ethnicity, in CULTURE,
GLOBALIZATION AND THE WORLD SYSTEM: CONTEMPORARY CONDITIONS FOR THE
REPRESENTATION OF IDENTITY 19 (Anthony D. King ed., 1997); ERNESTO LACLAU, NEW
REFLECTIONS ON THE REVOLUTION OF OUR TIME (1990); JUDITH P. BUTLER, BODIES THAT
MATTER: ON THE DISCURSIVE LIMITS OF SEX (1993).
25
E.g., MARSHALL, supra note 14, at 46; Stuart Hall, Notes on Deconstructing the
“Popular,” in PEOPLE’S HISTORY AND SOCIALIST THEORY 227, 239 (Raphael Samuel ed.,
1981).
26
E.g., Comedy III Prods., Inc. v. Gary Saderup, Inc., 21 P.3d 797, 804–05 (Cal. 2001).
27
I have explored this theme in an earlier work. See David Tan, Beyond Trademark Law:
What the Right of Publicity Can Learn from Cultural Studies, 25 CARDOZO ARTS & ENT.
L.J. 913 (2008). See also David Tan, The Fame Monster Reloaded: The Contemporary
Celebrity, Cultural Studies and Passing Off, 32 SYD. L. REV. 291 (2010).
28
BARTHES, supra note 19, at 112.
24
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challenge by minority groups to represent their cultural identities and
convey their political ideologies.29
This Article adopts the premise that the underlying rationale of the
First Amendment is the advancement of a democracy where the public can
freely participate in deliberating issues important to decision-making in a
democracy (“participatory democracy”). This is a plausible and wellsupported view of the First Amendment. It further contends that the
augmentation of this participatory theory of the First Amendment with
cultural studies insights is likely to lead to better outcomes in cases because
more speech of “greater” constitutional value is protected—i.e. speech that
contributes to an increased awareness and debate of public issues—while
speech of “lesser” value need not be accorded the same level of protection.
Part II will show that First Amendment jurisprudence, especially
Supreme Court decisions, supports an overarching approach to the First
Amendment in terms of a participatory theory that places the highest
constitutional value on political speech.
Part III argues that the various tests formulated to give effect to First
Amendment goals in right of publicity claims do not accord sufficient
protection to political speech because they do not adequately address how
uses of the celebrity identity may contribute to the advancement of
democratic deliberation and debate. This is demonstrated through an
analysis of the three main judicial tests presently used to articulate a First
Amendment defense in right of publicity claims.
Part IV contends that cultural studies writings on the political
significance of the celebrity semiotic sign can assist the development of
First Amendment jurisprudence and judicial tests in this area. It advances
the analysis by recommending ways in which the three tests may
incorporate relevant insights on the recoding potential of the celebrity sign
especially as used by subaltern groups or counterpublics as an integral part
of political and social identity formation.
Part V concludes that this use of cultural studies allows current First
Amendment jurisprudence to be refined to protect political speech in a
manner that more effectively negotiates the competing right of the celebrity
individual to exploit the commercial value of his or her identity and the
29
More recently, recoding—in a copyright context—has been defined to be “the
appropriation of a copyrighted cultural object for new expression in a way that ascribes a
different meaning to it than intended by its creator.” Notes, “Recoding” and the Derivative
Works Entitlement: Addressing the First Amendment Challenge, 119 HARV. L. REV. 1488,
1488 (2006). See also Anupam Chander & Madhavi Sunder, Everyone’s a Superhero: A
Cultural Theory of “Mary Sue” Fan Fiction as Fair Use, 95 CALIF. L. REV. 597, 600–25
(2007).
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right of the public to use the celebrity sign as an expressive communicative
resource in a participatory democracy.
II. OVERVIEW OF THE FIRST AMENDMENT
It has been noted by free speech scholar Rodney Smolla that
“[c]ontemporary free speech doctrines are extraordinarily detailed and often
confusing” and that “[m]odern First Amendment law abounds in three-part
and four-part tests of various kinds.”30 Similarly, Lillian BeVier and
Thomas McCarthy have expressed despair at how “First Amendment
theories have multiplied, the case law has become ever more chaotic, and
consensus on fundamental issues has remained elusive both on and off the
Court,”31 and how the rules are “often maddeningly vague and
unpredictable.”32 While it is not the purpose of this article to propose a
systematic reconciliation or reconstruction of the contentious doctrines and
rules of the First Amendment, this Part argues that participatory
understandings of democracy can provide a strong foundation for
articulating an appropriate standard of protection for political speech under
right of publicity laws.
This Part will first review goals and theories of the First Amendment
and then analyze how these are advanced by the present judicial approaches
in classifying and protecting speech within a First Amendment hierarchy. It
will show that while most First Amendment jurisprudence on the impact of
governmental regulation on freedom of speech offers limited assistance to
the formulation of a test to resolve the conflict between the private
proprietary right of publicity and free speech values, the adoption of a
participatory theory nonetheless can reinterpret and refashion the First
Amendment defense in publicity claims to protect political speech that is
widely recognized to have the highest constitutional value in a democracy.
A.Goals and Theories of the First Amendment
Courts generally are concerned that the enforcement of publicity rights
does not have a “chilling effect”33 on free speech. There are various theories
30
RODNEY A. SMOLLA & MELVILLE B. NIMMER, SMOLLA AND NIMMER ON FREEDOM OF
SPEECH: A TREATISE ON THE FIRST AMENDMENT § 2:13 (3d ed. 2008). See also Robert C.
Post, Reconciling Theory and Doctrine in First Amendment Jurisprudence, 88 CALIF. L.
REV. 2353, 2355 (2000).
31
Lillian R. BeVier, The First Amendment on the Tracks: Should Justice Breyer Be at the
Switch?, 89 MINN. L. REV. 1280, 1280 (2005).
32
MCCARTHY, supra note 8, § 8:9.
33
Dombrowski v. Pfister, 380 U.S. 479, 487 (1965). See also ERIC BARENDT, FREEDOM
OF SPEECH 38 (2d ed. 2005); FREDERICK SCHAUER, FREE SPEECH: A PHILOSOPHICAL
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9
of the First Amendment, but this Article adopts a participatory theory of
democracy involving deliberation and debate for two key reasons. First, in
addition to the centrality of such an understanding in justifying free speech
in any representative democracy, it is also an integral feature of many other
prominent theories.34 Second, the case law has consistently demonstrated
the “preferred position” of political speech at the apex of a speech
hierarchy, and this in turn indicates the preeminence of participatory
understandings of democracy.35 However, it should be noted that courts
may also consider other justifications that cover non-political expressions,
as there is no single overarching theory that can account for the protection
given to different types of speech.
Mutually supportive theories for the First Amendment have been said
to rest on the tripartite goals of the Framers of the U.S. Constitution that
comprise sponsoring enlightenment or the discovery of truth, selffulfillment, and citizen participation in a deliberative democracy.36 There
are numerous writings by political philosophers and jurists advocating the
protection of free speech principles, but this article will not be revisiting the
arguments by theorists such as John Stuart Mill, Alexander Meiklejohn,
Thomas Emerson, and Ronald Dworkin.37 Instead this section will focus
ENQUIRY 80–85 (1982). The term “free speech” shall be taken to mean the freedom of
speech and of the press as protected by the First Amendment. It is well-accepted that “in
modern First Amendment jurisprudence the Press Clause has largely been subsumed into
the Speech Clause.” SMOLLA & NIMMER, supra note 30, §§ 22:6, 22:10, 22:18.
34
Richard H. Fallon, Jr., How to Choose a Constitutional Theory, 87 CALIF. L. REV. 535,
577–78 (1999) (“All else being equal, one theory should therefore be preferred to another if
it is more consonant with widely-shared values or has better prospects of attaining broad
acceptance.”).
35
BARENDT, supra note 33, at 20–21. It has also been called the “most important
theoretical approach to freedom of speech in the twentieth century.” Jack M. Balkin,
Digital Speech and Democratic Culture: A Theory of Freedom of Expression for the
Information Society, 79 N.Y.U. L. REV. 1, 28 (2004).
36
Rodney Smolla argues that all three theories should be understood “not as mutually
exclusive defenses of freedom of speech, but rather as mutually supportive rationales.”
SMOLLA & NIMMER, supra note 30, § 2:7. See also MCCARTHY, supra note 8, §§ 8:2–8:8;
RODNEY A. SMOLLA, FREE SPEECH IN AN OPEN SOCIETY 14–17 (1992); BARENDT, supra
note 33, at 7–21. There have been different variations of the goals advanced by the First
Amendment, but they cover essentially the same themes. E.g., Whitney v. California, 274
U.S. 357, 375 (Brandeis, J., concurring) (1927); THOMAS I. EMERSON, THE SYSTEM OF
FREEDOM OF EXPRESSION 6, 879–881 (1970); C. EDWIN BAKER, HUMAN LIBERTY AND
FREEDOM OF SPEECH 47 (1989); Martin H. Redish, The Value of Free Speech, 130 U. PA.
L. REV. 591, 593 (1982).
37
For an excellent review of such works, see, e.g., BARENDT, supra note 33, at 1–36;
SCHAUER, supra note 33, at 35–46. See also JOHN STUART MILL, ON LIBERTY AND OTHER
ESSAYS 73, 73–85, 139–55 (John Gray ed., 1998); ALEXANDER MEIKLEJOHN, FREE SPEECH
AND ITS RELATION TO SELF-GOVERNMENT (1948); THOMAS I. EMERSON, TOWARD A
10
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only on how the First Amendment is traditionally viewed as essential for
the protection of speech from governmental regulation, and how the courts
have determined a hierarchy of different types of speech with the highest
protection accorded to political speech and a lower level of protection for
commercial speech.
In its earlier conceptions, the First Amendment goal of enlightenment
or the discovery of truth is represented most prominently by Oliver Wendell
Holmes’s theory of a “marketplace of ideas” in which “the ultimate good
desired is . . . reached by free trade in ideas,”38 and that “the best test of
truth is the power of the thought to get itself accepted in the competition of
the market.”39 The marketplace theory is perhaps “the most famous and
rhetorically resonant of all free speech theories,”40 but it also exhibits a
strong underlying democratic theory, evident in the oft-quoted phrase from
New York Times v. Sullivan that there is a “profound national commitment”
to the principle that “debate on public issues should be uninhibited, robust,
and wide-open.”41
In contrast, the self-fulfillment function shifts the attention from the
ideas marketplace to individual dignity.42 While the Supreme Court has
acknowledged that “the human spirit . . . demands self-expression,”43 there
have been relatively few decisions discussing this as a central goal of the
First Amendment.44 Nevertheless, it has been argued that although this
theory might regard a right to express personal beliefs and political attitudes
as a reflection of what it means to be human, the exercise of free speech
might also be seen to be of value to democracy in “leading to the
GENERAL THEORY OF THE FIRST AMENDMENT (1966); RONALD M. DWORKIN, FREEDOM’S
LAW (1996).
38
Abrams v. U.S., 250 U.S. 616, 630 (1919). See also Whitney, 274 U.S. at 375.
39
Abrams, 250 U.S. at 630.
40
SMOLLA & NIMMER, supra note 30, § 2:4.
41
N.Y. Times Co. v. Sullivan, 376 U.S. 254, 270 (1964), quoted in NAACP v. Claiborne
Hardware Co., 458 U.S. 886, 913 (1982); Boos v. Barry, 485 U.S. 312, 318 (1988). The
democratic variant of the marketplace of ideas theory was first discussed in Thornhill v.
Alabama, 310 U.S. 88, 96, 101–06 (1940).
42
E.g., C. Edwin Baker, Scope of the First Amendment Freedom of Speech, 25 UCLA L.
REV. 964, 990–91 (1978); Genevieve Blake, Expressive Merchandise and the First
Amendment in Public Fora, 34 FORDHAM URB. L.J. 1049, 1081–83 (2007).
43
Procunier v. Martinez, 416 U.S. 396, 427 (1974).
44
E.g., Stanley v. Georgia, 394 U.S. 557, 565 (1969); Cohen v. California, 403 U.S. 15,
26 (1971). For a useful discussion of this theory of the First Amendment, see Brian C.
Murchison, Speech and the Self-Realization Value, 33 HARVARD C.R.-C.L. L. REV. 443
(1998). There has also been much criticism that individual self-actualization or autonomy
cannot provide a sound basis for the First Amendment. E.g., Garry, infra note 54, at 514;
e.g., Stanley Ingber, Rediscovering the Communal Worth of Individual Rights: The First
Amendment in Institutional Contexts, 69 TEX. L. REV. 1, 19 (1990).
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11
development of more reflective and mature individuals and so benefiting
society as a whole.”45
However, the Supreme Court has more recently embraced a
“participatory theory of democracy”46 that is concerned with the
enlightenment of public decision-making in a democracy through enabling
public access to information and promoting public discourse.47 This theory
has been viewed as drawing on elements of the other two theories: (1) that
the minorities in a representative democracy have the right to contribute to
political debate as they may have better ideas than the majority, and (2) that
the right of individuals to dignity and self-fulfillment may be expressed
through their engagement in public discourse. Often known as the
Madisonian ideal of deliberative democracy, different but related versions
of this theory have been prominently championed by constitutional scholars
like Robert Post,48 Cass Sunstein,49 and Jack Balkin.50 The participatory
theory is also supported by the more philosophical writings of Meiklejohn,51
Dworkin,52 and Owen Fiss.53 Although the Supreme Court has never ruled
45
Tom Campbell, Rationales for Freedom of Communication, in FREEDOM OF
COMMUNICATION 17, 33–34 (Tom Campbell & Wojciech Sadurski eds., 1994); BARENDT,
supra note 33, at 13.
46
E.g., Post, supra note 30, at 2371. See also BARENDT, supra note 33, at 18–21;
DWORKIN, supra note 37, at 15–26. Smolla refers to this as the “democratic selfgovernance” rationale. SMOLLA & NIMMER, supra note 30, § 2:28.
47
E.g., Virginia v. Black, 538 U.S. 343, 365 (2003); Reno v. Am. Civil Liberties Union,
521 U.S. 844, 885 (1997); Hustler Magazine, Inc. v. Falwell, 485 U.S. 46, 53 (1988); Va.
State Bd. of Pharmacy v. Va. Citizens Consumer Council, 425 U.S. 748, 765 (1976). At the
Circuit level, see also King v. Fed. Bureau of Prisons, 415 F.3d 634, 637 (7th Cir. 2005);
Prometheus Radio Project v. FCC, 373 F.3d 372, 435 (3d Cir. 2004); United States v.
Rowlee, 899 F.2d 1275, 1278 (2d Cir. 1990).
48
E.g., Post, supra note 30; Robert C. Post, Meiklejohn’s Mistake: Individual Autonomy
and the Reform of Public Discourse, 64 U. COLO. L. REV. 1109 (1993); Robert C. Post, The
Constitutional Concept of Public Discourse: Outrageous Opinion, Democratic
Deliberation, and Hustler Magazine v. Falwell, 103 HARV. L. REV. 601 (1990) [hereinafter
THE CONSTITUTIONAL CONCEPT OF PUBLIC DISCOURSE].
49
E.g., CASS R. SUNSTEIN, DEMOCRACY AND THE PROBLEM OF FREE SPEECH 17–23,
241–52 (1993); CASS R. SUNSTEIN, DESIGNING DEMOCRACY: WHAT CONSTITUTIONS DO
6–9, 96–101, 239–43 (2001).
50
Balkin argues that the purpose of free speech is to promote a “democratic culture” that
is even broader than deliberation about public issues such that each individual has “a fair
chance to participate in the production of culture, and in the development of the ideas and
meanings that constitute them and the communities and subcommunities to which they
belong.” Balkin, supra note 35, at 4. See also Jack M. Balkin, Populism and Progressivism
as Constitutional Categories, 104 YALE L.J. 1935, 1948–49 (1995).
51
E.g., ALEXANDER MEIKLEJOHN, POLITICAL FREEDOM: THE CONSTITUTIONAL POWERS
OF THE PEOPLE 19–28 (1965).
52
E.g., DWORKIN, supra note 37, at 15–26.
53
E.g., Owen M. Fiss, Free Speech and Social Structure, 71 IOWA L. REV. 1405, 1409–
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that to qualify for the highest levels of constitutional protection speech must
relate to self-government,54 Justice Stephen Breyer, speaking in an
extrajudicial capacity, has advocated an approach to constitutional
adjudication centered on “active liberty” similar to Post’s participatory
theory.55 An acceptance of the participatory theory has important
implications for the continuing development of judicial approaches in
resolving the tension between free speech values and property rights in a
right of publicity claim, as it focuses on not an abstract notion of the quest
for truth but how the nature and content of communication can “ensure that
the individual citizen can effectively participate in and contribute to our
republican system of self-government”56 where “national identity [is
understood] to be endlessly controversial.”57
The Supreme Court has never made an “official choice” among
competing theories.58 But “where the doctrinal implications of different
prominent theories . . . collide, courts will tend to give priority to the
participatory theory of democracy.”59 As the next section will demonstrate,
the Supreme Court’s articulation of a hierarchy of protectable speech, with
political speech at its apex, is compatible with this understanding.
B.Scope of Freedom of Speech
The protection of speech—which generally includes symbolic or
expressive conduct60—by the First Amendment depends on its position in
10 (1986).
54
Patrick M. Garry, The First Amendment and Non-Political Speech: Exploring a
Constitutional Model that Focuses on the Existence of Alternative Channels of
Communication, 72 MO. L. REV. 477, 519 (2007). See also SMOLLA & NIMMER, supra note
30, § 2:46.
55
Stephen Breyer, Madison Lecture: Our Democratic Constitution, 77 N.Y.U. L. REV.
245, 246 (2002). The participatory theory also appears to have the support of Brian
Murchison who, through an analysis of judgments of the Supreme Court, contends that the
“self-governance value” underpins the First Amendment. Brian C. Murchison, Speech and
the Self-Governance Value, 14 WM. & MARY BILL RTS. J. 1251, 1291–1306 (2006).
56
Globe Newspaper Co. v. Super. Ct. for Norfolk Cnty., 457 U.S. 596, 604 (1982).
57
Post, supra note 30, at 2369.
58
Cass R. Sunstein, The Supreme Court 1995 Term - Foreword: Leaving Things
Undecided, 110 HARV. L. REV. 4, 13 (1996).
59
Post, supra note 30, at 2371. According to Schauer, the “narrowness of the argument
from democracy is also its greatest strength . . . it does furnish several strong reasons for
giving special attention and protection to political speech.” SCHAUER, supra note 33, at 44.
It is noted that the opposition to the participatory theory comes most strongly from those
who argue from a position of individual autonomy. E.g., C. Edwin Baker, Harm, Liberty
and Free Speech, 70 S. CAL. L. REV. 979, 981 (1997); David Strauss, Persuasion,
Autonomy and Freedom of Expression, 91 COLUM. L. REV. 334, 354–55 (1991).
60
E.g., R.A.V. v. City of St. Paul, Minn., 505 U.S. 377, 382 (1992) (cross-burning);
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13
the hierarchy of protectable speech, the applicable level of scrutiny of the
governmental action, and the nature of the other rights with which it is in
conflict.61 However, the U.S. Supreme Court has not established “a clear
theory to explain why and when speech qualifies for the top tier,”62 with the
plurality opinion in Dun & Bradstreet, Inc. v. Greenmoss Builders, Inc.
conceding that the inquiry “must be determined by [the expression’s]
content, form and context.”63
The Supreme Court has highlighted that while freedom of speech has
been recognized “as indispensable to a free society and its government . . .
[it] has not meant that the public interest in free speech . . . always has
prevailed over competing interests of the public.”64 Most existing First
Amendment jurisprudence is concerned with governmental action that
abridges speech,65 with less attention given to discussing how private action
can also significantly restrict speech.66 Yet right of publicity laws are not
seen as content-based or viewpoint-based governmental regulation of
speech, thus resulting in the bulk of case law on governmental action being
unhelpful to an analysis of First Amendment issues in a publicity claim.
Nonetheless, the general recognition of the right of publicity as a private
Texas v. Johnson, 491 U.S. 397, 405-06 (1989) (flag-burning); Tinker v. Des Moines
Indep. Cmty. Sch. Dist., 393 U.S. 503, 505 (1969) (wearing black armbands); Ayres v. City
of Chicago, 125 F.3d 1010 (7th Cir. 1997) (wearing t-shirts).
61
BARENDT, supra note 33, at 75. See also SCHAUER, supra note 33, at 89–92.
62
SUNSTEIN, DEMOCRACY AND THE PROBLEM OF FREE SPEECH, supra note 49, at 11.
63
472 U.S. 749, 761 (1985).
64
Smith v. Daily Mail Publ’g Co., 443 U.S. 97, 106 (1979) (Rehnquist, J., concurring).
Regarding the protection of private property as a competing interest, see PruneYard
Shopping Ctr. v. Robins, 447 U.S. 74, 82–88 (1980); Lloyd Corp. v. Tanner, 407 U.S. 551,
569–70 (1972).
65
The Supreme Court has employed a “heightened scrutiny methodology” drawn from
the Fourteenth Amendment jurisprudence where governmental regulation has to satisfy the
relevant strict, intermediate, or rational scrutiny standards, depending on whether it was
content-neutral or content-based. Content-neutral time, place and manner restrictions are
usually permitted if they serve a substantial governmental interest, but content-based
restriction of protectable speech will be subject to strict scrutiny, which is usually fatal to
the challenged regulation. E.g., SMOLLA & NIMMER, supra note 30, §§ 2:12, 3:1–3:2;
United States v. Playboy Entm’t Group, 529 U.S. 803, 817 (2000); Reno v. Am. Civil
Liberties Union, 521 U.S. 844, 874–79 (1997); R.A.V., 505 U.S. at 382–83; City of Renton
v. Playtime Theatres, Inc., 475 U.S. 41, 46–47 (1986); Susan H. Williams, Content
Discrimination and the First Amendment, 139 U. PA. L. REV. 615 (1991); Martin H.
Redish, The Content Distinction in First Amendment Analysis, 34 STAN. L. REV. 113
(1981).
66
On the impact of the enforcement of private intellectual property rights on the public
domain, see, e.g., Keith Aoki, Authors, Inventors and Trademark owners: Private
Intellectual Property and the Public Domain Part II, 18 COLUM.-VLA J.L. & ARTS 191
(1994); Michael Madow, Private Ownership of Public Image: Popular Culture and
Publicity Rights, 81 CAL. L. REV. 127 (1993).
14
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property right creates a head-on collision with the defendant’s free speech
interests, as well as the audience’s interest in receiving the communication,
thus requiring courts to formulate appropriate tests to resolve this conflict.
This Part contends that such judicial formulations should adopt as a
starting point a consideration of the constitutional value of the different
types of protectable speech. The participatory theory clearly elevates
political discourse to a special status at the top of the speech hierarchy, and
this is reinforced by Supreme Court decisions that consistently accord to
political speech the highest constitutional value in the system of American
democracy.67 Although the Court has categorized art and entertainment
together with political speech as belonging to the “core” of the First
Amendment, such expressions do not appear to enjoy same level of
constitutional protection in the absence of disseminating news;68
commercial speech has received a lower level of protection,69 with fighting
words, obscenity, and child pornography receiving none at all.70
It seems that the Supreme Court has implicitly accepted the
participatory theory with frequent pronouncements, such as that the First
Amendment “was fashioned to assure unfettered interchange of ideas for the
bringing about of political and social changes desired by the people.”71
Furthermore, the Court thought that “the practice of persons sharing
common views banding together to achieve a common end is deeply
embedded in the American political process.”72 Generally, political speech
covers all discussion on public issues, especially if intended by the speaker
67
Dun & Bradstreet, Inc., 472 U.S. at 758–59 (1985). See also Morse v. Frederick, 551
U.S. 393, 403 (2007); Black, 538 U.S. at 365 (2003); NAACP v. Claiborne Hardware Co.,
458 U.S. 886, 913 (1982); SMOLLA & NIMMER, supra note 30, §§ 16:1–16:2.
68
MCCARTHY, supra note 8, § 8:15 (“to the extent that ‘entertainment’ is not the
equivalent of hard ‘news,’ it enjoys some slightly lesser level of constitutional protection”).
C.f. Playboy, 529 U.S. at 818; Hurley v. Irish-Am. Gay, Lesbian & Bisexual Grp. of
Boston, 515 U.S. 557, 569 (1995); Schad v. Borough of Mount Ephraim, 452 U.S. 61, 65
(1981); Winters v. New York, 333 U.S. 507, 510 (1948). Art is protected because it “may
affect public attitudes and behavior in a variety of ways, ranging from direct espousal of a
political or social doctrine to the subtle shaping of thought which characterizes all artistic
expression.” Joseph Burstyn, Inc. v. Wilson, 343 U.S. 495, 501 (1952); cf. Mastrovincenzo
v. City of New York, 435 F.3d 78, 94–96 (2d Cir. 2006); Am. Civil Liberties Union of
Nev. v. City of Las Vegas, 333 F.3d 1092, 1107 (9th Cir. 2003).
69
E.g., Bd. of Trs. of State Univ. of N.Y. v. Fox, 492 U.S. 469, 477 (1989); Cent.
Hudson Gas & Elec. Corp. v. Pub. Serv. Comm’n of N.Y., 447 U.S. 557, 566 (1980); Va.
State Bd. of Pharmacy v. Va. Citizens Consumer Council, 425 U.S. 748, 763–65 (1976).
70
E.g., United States v. Williams, 553 U.S. 285, 293 (2008); Black, 538 U.S. at 358–60;
R.A.V., 505 U.S. at 422 (1992); Miller v. California, 413 U.S. 15, 23–24 (1973);
Chaplinsky v. New Hampshire, 315 U.S. 568, 571–72 (1942).
71
Connick v. Myers, 461 U.S. 138, 145 (1983); N.Y. Times Co. v. Sullivan, 376 U.S.
254, 269 (1964); Roth v. United States, 354 U.S. 476, 484 (1957).
72
Claiborne Hardware Co., 458 U.S. at 907.
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15
to influence governmental action.73 Political speech has been defined by
commentators as speech that has “a reasoned, cognitive connection to some
identifiable political issue that has the potential of entering the legislative
arena”;74 or “which bears, directly or indirectly, upon issues with which
voters have to deal”;75 or “when it is both intended and received as a
contribution to public deliberation about some issue.”76
Although art and entertainment are protected by the First Amendment
as having intrinsic value, courts often examine their “political value.” A
number of decisions assess their contribution to public debate through the
articulation of a particular viewpoint or through critical commentary or
parody.77 The Supreme Court in Hurley v. Irish-American Gay, Lesbian and
Bisexual Group of Boston commented, but without further explanation, that
a “narrow, succinctly articulable message is not a condition of constitutional
protection, which if confined to expressions conveying a ‘particularized
message,’ would never reach the unquestionably shielded painting of
Jackson Pollock, music of Arnold Schöenberg, or Jabberwocky verse of
Lewis Carroll.”78 But the Court has not declared that all entertainment and
artistic expression is protected by the First Amendment, and the decisions
of the circuit courts are anything but consistent. For example, in evaluating
governmental action, the Ninth Circuit has developed a test which protects
merchandise that conveys “a religious, political, philosophical or
ideological message,”79 while the Second Circuit uses a weighing
methodology to determine whether the defendant’s work was
“predominantly expressive” in order to separate expressive art from
commercial merchandise.80 Generally, courts have difficulty drawing “[t]he
line between the informing and the entertaining”81 and will continue to face
73
Id. at 913–14; Garrison v. Louisiana, 379 U.S. 64, 74–75 (1964); Sullivan, 376 U.S. at
270 (1964).
74
Garry, supra note 54, at 516.
75
MEIKLEJOHN, supra note 37, at 79.
76
SUNSTEIN, DEMOCRACY AND THE PROBLEM OF FREE SPEECH, supra note 49, at 130.
77
In a right of publicity context, see, e.g., Estate of Presley v. Russen, 513 F. Supp. 1339
(D.N.J., 1981); ETW Corp. v. Jireh Publ’g, Inc., 332 F.3d 915 (6th Cir. 2003).
78
Hurley v. Irish-Am. Gay, Lesbian & Bisexual Grp. of Boston, 515 U.S. 557, 569
(1995). This view that art may be protected for its intrinsic aesthetic value, even if it
communicates no articulable message, has been widely debated. E.g., David Greene, Why
Protect Political Art as “Political Speech”?, 27 HASTINGS COMM. & ENT. L.J. 359, 364–69
(2005); Marci A. Hamilton, Art Speech, 49 VAND. L. REV. 73, 105–12 (1996).
79
Am. Civil Liberties Union of Nev. v. City of Las Vegas, 333 F.3d 1092, 1107 (9th Cir.
2003).
80
Mastrovincenzo v. City of New York, 435 F.3d 78, 96 (2d Cir. 2006). See also Bery v.
City of New York, 97 F.3d 689, 696–97 (2d Cir. 1996).
81
Winters v. New York, 333 U.S. 507, 510 (1948).
16
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problems in publicity claims when deciding whether uses of a celebrity
image contribute to public debate (thereby securing the highest protection
as political speech) or provide entertainment (hence getting a lesser degree
of protection). The subsequent decisions of some courts have read down the
Hurley dicta regarding the protection of apolitical artworks.82 It appears
unavoidable that judges will have to grapple with ascertaining the
constitutional value of the defendant’s use of the celebrity personality in
artistic or entertainment contexts.
A significant number of right of publicity claims involve unauthorized
uses in advertising.83 Advertising is the quintessence of commercial
speech,84 receiving some constitutional protection against governmental
regulation under the Central Hudson standard85 as it “carr[ies] information
of import to significant issues of the day”86 and the information it provides
is needed for “private economic decisions.”87 However, the unauthorized
use of a celebrity identity to propose a commercial transaction is unlikely to
receive First Amendment protection. The courts have not held that the
constitutional protection of commercial speech can immunize one from
liability in a publicity claim,88 and this is evident in the various judicial tests
used to delineate between protectable expressive uses and non-protectable
commercial uses.
In summary, political speech is the most “valuable” type of speech
under the participatory theory and is also an important feature of other First
Amendment theories. Recent cases have become more focused on the
constitutional value of a communication to public political discourse.
82
E.g., Mastrovincenzo, 435 F.3d at 94–95.
E.g., White v. Samsung Electronics Am., Inc., 971 F.2d 1395 (9th Cir. 1992) (White I);
Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988); Allen v. Nat’l Video, Inc., 610 F.
Supp. 612 (S.D.N.Y. 1985); Onassis v. Christian Dior-N.Y., Inc., 472 N.Y.S.2d 254 (Sup.
Ct. 1984).
84
Commercial speech is one that “proposes a commercial transaction.” E.g., Bd. of Trs.
of State Univ. of N.Y. v. Fox, 492 U.S. 469, 482 (1989); Va. State Bd. of Pharmacy v. Va.
Citizens Consumer Council, 425 U.S. 748, 761 (1976).
85
Cent. Hudson Gas & Elec. Corp. v. Pub. Serv. Comm’n of New York, 447 U.S. 557,
566 (1980). Despite numerous criticisms from individual judges and legal scholars, the
four-part analysis is still the test applied by the courts. E.g., Greater New Orleans Broad.
Ass’n v. United States, 527 U.S. 173, 183 (1999); 44 Liquormart Inc v. Rhode Island, 517
U.S. 484, 495–502, 522–23 (1996); Robert C. Post, The Constitutional Status of
Commercial Speech, 48 UCLA L. REV. 1, 34–43 (2000); Frederick Schauer, Commercial
Speech and the Architecture of the First Amendment, 56 U. CIN. L. REV. 1181, 1182
(1988).
86
44 Liquormart, 517 U.S. at 512.
87
Virginia Pharmacy, 425 U.S. at 765.
88
MCCARTHY, supra note 8, §§ 3:46, 7:1; Comedy III Prods., Inc. v. Gary Saderup, Inc.,
21 P.3d 797, 802 (Cal. 2001).
83
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17
Indeed the courts have eschewed a case-by-case balancing approach to
governmental regulation of protectable speech,89 employing a heightened
scrutiny methodology that investigates whether there was viewpoint
discrimination. However, in disputes involving nongovernmental parties,
where free speech rights protected by the First Amendment clash with other
rights guaranteed by the Constitution—e.g. protection of private property
under the Fifth90 and Fourteenth91 Amendments—courts appear willing to
consider the relative burdens placed on the exercise of the respective
rights.92 As the right of publicity is considered by courts to be a “property
right”93 and in some instances a form of intellectual property right,94 there
ought to be a coherent framework that allows it to be balanced against First
Amendment values, drawing on appropriate analogies with either real
property or intellectual property, where the courts weigh the harm to the
holder of a private property right against the impact of the burden on the
freedom of speech on the speaker and the audience.
III. THE FIRST AMENDMENT DEFENSE IN A RIGHT OF PUBLICITY
CLAIM
Insofar as statutory publicity rights are concerned, McCarthy observes
that it is “difficult to group the statutes into any sort of coherent ‘types’ or
subspecies,” and they present “a crazy quilt of different responses at
89
SMOLLA & NIMMER, supra note 30, §§ 2:56–2:60.
“No person shall be . . . deprived of life, liberty, or property, without due process of
law.” U.S. CONST. amend. V.
91
“No State shall . . . deprive any person of life, liberty, or property, without due process
of law; nor deny to any person within its jurisdiction the equal protection of the laws.” U.S.
CONST. amend. XIV.
92
MCCARTHY, supra note 8, §§ 8:31–8:32. In the shopping center cases, courts are also
concerned with the availability of alternative channels of communication, the presence of
state action, and whether the property has become a public forum. E.g., PruneYard
Shopping Ctr. v. Robins, 447 U.S. 74, 83–84 (1980); Lloyd Corp. v. Tanner, 407 U.S. 551,
567–70 (1972); Stanley H. Friedelbaum, Private Property, Public Property: Shopping
Centers and Expressive Freedom in the States, 62 ALB. L. REV. 1229 (1999).
93
Although the court in Haelan Laboratories was not explicit about the meaning of the
label “property,” the Second Circuit clarified in a later decision that the right of publicity
was indeed a “property right.” Topps Chewing Gum, Inc. v. Fleer Corp., 799 F.2d 851, 852
(2d Cir. 1986). For a list of states which have explicitly recognized this in either case law
or statute, see MCCARTHY, supra note 8, §§ 8:29–8:33, 10:6–10:9. See also RESTATEMENT
(THIRD) OF UNFAIR COMPETITION § 46 cmt. g (1995); RESTATEMENT (SECOND) OF TORTS §
652C cmt. a (1977).
94
E.g., Acme Circus Operating Co., Inc. v. Kuperstock, 711 F.2d 1538, 1541 (11th Cir.
1983).
90
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different times to different demands on the legislatures.”95 Nonetheless, the
relevant legislation will usually enumerate exclusion or exemption
categories of use that incorporate by reference the “core” speech protections
of the First Amendment. These statutes do not make a distinction between
the constitutional values of the different types of speech: once the
defendant’s use has been found to be within the statutory description of
what constitutes permissible use in news; public affairs; political
campaigns; sports broadcasts; original works of fine art; literary, dramatic,
musical, or artistic works,96 or by particular types of media,97 the plaintiff is
barred from making a statutory claim. Under this categorical approach, the
unauthorized use of a celebrity’s identity in a work of fine art is treated the
same as its use in a political rally; both will be permitted regardless of the
value of their contribution to the debate of public issues.98
As Part II has shown, a preponderance of Supreme Court decisions and
scholarly writings support the view that the central goal of the First
Amendment is to advance democratic deliberation. Therefore, it follows
that the defendant’s use of the celebrity identity may be classified as
political speech with the highest constitutional value if it contributes to
democratic processes, and such uses should be accorded greater value than
artistic speech or entertainment. Unlike the privileged status that political
speech occupies in cases involving judicial scrutiny of legislation for
viewpoint or content discrimination, political speech does not occupy a
paramount position in the current judicial tests which have been formulated
to resolve the conflict between the plaintiff’s proprietary right in identity
and the First Amendment.
Section A will examine why most “classic” First Amendment
jurisprudence concerned with governmental action offers limited guidance
to the formulation of the First Amendment defense in publicity claims.
Section B will investigate how, in the absence of a clear direction from the
Supreme Court, lower courts have developed a mélange of tests that are not
based on a particular theory of the First Amendment. Through a critical
95
E.g., CAL. CIV. CODE §§ 3344(d), 3344.1(a)(2) (2010); FLA. STAT. § 540.08(3)(a)
(2010); 765 ILL. COMP. STAT. ANN. 1075/35(b) (2010); IND. CODE § 32-36-1-1(c)(1)
(2010); OHIO REV. CODE ANN. §§ 2741.02(D), 2741.09(A) (2010).
97
E.g., CAL. CIV. CODE § 3344(f) (2010); 765 ILL. COMP. STAT. ANN. 1075/35(b) (2010);
IND. CODE § 32-36-1-1(c)(1)(D) (2010); OHIO REV. CODE ANN. § 2741.02(E) (2010);
TENN. CODE ANN. § 47-25-1107(c) (2010).
98
As the myriad statutory frameworks generally do not underprotect political speech, this
Article will not be discussing their shortcomings. But see Richard S. Robinson,
Preemption, the Right of Publicity and a New Federal Statute, 16 CARDOZO ARTS & ENT.
L.J. 183 (1998); Barbara Singer, The Right of Publicity: Star Vehicle or Shooting Star?, 10
CARDOZO ARTS & ENT. L.J. 1(1991); MCCARTHY, supra note 8, §§ 6:3–6:8.
96
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analysis of three main judicial approaches, it will demonstrate that these
tests do not adequately promote public discourse and debate, and that
reference to cultural studies perspectives may help to articulate the
“operationalization” of the participatory theory in right of publicity claims.
A.Limited Guidance from the U.S. Supreme Court
As a general rule, a private person may exclude a speaker from his or
her property without violating the First Amendment.99 Under the O’Brien
principles, the enforcement of the right of publicity by the states may be
viewed as content-neutral protection of personal property—an “important or
substantial governmental interest”—that is subject to intermediate scrutiny
and consequently upheld even though there may be incidental and indirect
interference with speech.100 Thus the First Amendment cases on
governmental regulation of speech, including time-place-manner
restrictions, do not offer much assistance to the formulation of a First
Amendment defense in publicity claims and have not been the subject of
much consideration by circuit and state courts.
The Supreme Court, in its only decision to have ever considered a clash
between the right of publicity and the First Amendment, eschewed the
heightened scrutiny doctrine used in the governmental regulation of speech
cases.101 Zacchini v. Scripps-Howard Broadcasting Co. was unusual in its
facts because what was appropriated was the plaintiff’s entire fifteen-second
human cannonball act. Indeed the Zacchini decision may be distinguished
from most right of publicity claims, which involve an unauthorized use of
name, likeness, or other evocative aspects of identity rather than the
performance value of identity.102 Thus many commentators and courts have
construed Zacchini to be of limited precedential value, relevant only in the
rare situation where the plaintiff’s “entire act” has been appropriated.103 As
99
E.g., Hudgens v. NLRB, 424 U.S. 507, 518–19 (1976); Lloyd Corp. v. Tanner, 407
U.S. 551, 567 (1972). See also Mark C. Alexander, Attention, Shoppers: The First
Amendment in the Modern Shopping Mall, 41 ARIZ. L. REV. 1 (1999).
100
United States v. O’Brien, 391 U.S. 367, 377 (1968). See also Lloyd Corp., 407 U.S. at
570 (upholding the use of trespass laws to exclude speakers from private shopping centers).
101
Zacchini v. Scripps-Howard Broad. Co., 433 U.S. 562 (1977).
102
J. Thomas McCarthy, The Human Persona as Commercial Property: The Right of
Publicity, 19 COLUM.-VLA J.L. & ARTS 129, 133 (1995); Richard C. Ausness, The Right of
Publicity: A “Haystack in a Hurricane,” 55 TEMP. L.Q. 977, 989–90 (1982).
103
E.g., Comedy III Prods., Inc. v. Gary Saderup, Inc., 21 P.3d 797, 806 (Cal. 2001);
MCCARTHY, supra note 8, § 8:27; Russell S. Jones, Jr., The Flip Side of Privacy: The Right
of Publicity, The First Amendment, and Constitutional Line Drawing—A Presumptive
Approach, 39 CREIGHTON L. REV. 939, 946 (2006). See also Pamela Samuelson, Reviving
Zacchini: Analyzing First Amendment Defenses in Right of Publicity and Copyright Cases,
57 TUL. L. REV. 836 (1983).
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a result, as Part B will show, lower courts have independently formulated
their own tests to resolve the property-speech conflict. However, Zacchini is
important here on two key points.
First, it is significant that the Supreme Court considered the line of
authorities that included New York Times Co. v. Sullivan,104 Time, Inc. v.
Hill,105 Gertz v. Robert Welch, Inc.,106 and Time, Inc. v. Firestone,107 which
dealt with defamation and invasion of privacy claims by public figures, and
declined to extend the actual malice standard to media defendants for right
of publicity claims.108 This suggests that the Supreme Court does not
embrace an overarching constitutional actual malice standard that applies to
all communications by media defendants, and appears to make a distinction
between cases where there was damage to the dignitary or reputational
interests of the plaintiff (e.g., invasion of privacy, defamation) and where
there was damage to commercial exploitation opportunities (e.g.,
infringement of right of publicity). Hence it presents ample possibilities for
the judicial development of an appropriate First Amendment test to
determine the liability of media defendants in publicity claims by public
figures, which include politicians and celebrities.109
Second, despite the frequent rejection of case-by-case balancing in
First Amendment cases involving state action,110 the Zacchini majority
104
376 U.S. 254 (1964).
385 U.S. 374 (1967).
106
418 U.S. 323 (1974).
107
424 U.S. 448 (1976).
108
Zacchini v. Scripps Howard Broad. Co., 433 U.S. 562, 571–75 (1977). The actual
malice standard requires a public figure to prove that the publication by the media
defendant was made “with knowledge that it was false or with reckless disregard of
whether it was false or not.” N.Y. Times, 376 U.S. at 280. Despite Zacchini, some courts
have adopted the actual malice standard. E.g., Hoffman v. Capital Cities/ABC, Inc., 255
F.3d 1180, 1186–8 (9th Cir. 2001); Eastwood v. National Enquirer, Inc., 123 F.3d 1249,
1255 (9th Cir. 1997). See also Casondra Kevorkian, Reinterpreting Jurisprudence: The
Right of Publicity; Hoffman v. Capital Cities/ABC, Inc., 37 LOY. L.A. L. REV. 85, 93–103
(2003).
109
Under the Gertz classification, celebrities are viewed as those “who, by reason of the
notoriety of their achievements or the vigor and success with which they seek the public’s
attention, are properly classed as public figures.” Gertz, 418 U.S. at 342. See also Howard
I. Berkman, The Right of Publicity-Protection for Public Figures and Celebrities, 42
BROOK. L. REV. 527 (1976); David Branson & Sharon Sprague, The Public Figure-Private
Person Dichotomy: A Flight from First Amendment Reality, 90 DICK. L. REV. 627 (1986);
Frederick Schauer, Public Figures, 29 WM. & MARY L. REV. 905 (1984).
110
For a discussion of judicial balancing, see, e.g., Norman T. Deutsch, Professor Nimmer
Meets Professor Schauer (and Others): An Analysis of “Definitional Balancing” as a
Methodology for Determining the “Visible Boundaries of the First Amendment,” 39
AKRON L. REV. 483 (2006); Frederick Schauer, The Boundaries of the First Amendment: A
105
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recognized that the proprietary right of publicity is not always trumped by
free speech. The majority appeared to balance, on the one hand, the threat to
the economic value of the plaintiff’s performance and the impact of his
ability to earn a living111 with the social purposes of preventing “unjust
enrichment” and providing “an economic incentive . . . to make the
investment to produce a performance of interest to the public,”112 and on the
other hand, the benefit of news and entertainment to the public.113 However,
without elaboration, the majority held that the plaintiff was entitled to
compensation as the media was not always immunized by the First
Amendment in right of publicity claims, a conclusion that was criticized by
the dissent for its perfunctory brevity.114
In contrast to the majority opinion, which focused on the economic
value of the plaintiff’s act and whether this value was taken by the
defendant, the dissent looked to the intent of the media defendant as a
starting point in its analysis. Nevertheless, both the majority and the dissent
“recognized that any formula to be used when deciding the First
Amendment issue should be based on a consideration of the public’s
benefits and losses resulting in the absence of the privilege.”115 This aspect
of Zacchini is often ignored by judges and commentators who champion a
particular test. For present purposes, it is notable that the Zacchini balancing
approach can accommodate a participatory theory of democracy, where
greater protection may be given to uses of the celebrity identity that
promote attention to public issues and engender public debate.116
B.Judicial Approaches
Regardless of the judicial test ultimately used, the circuit and state
courts agree that if the defendant’s use of the plaintiff’s identity is
categorized as protected “core” speech, such as political speech,
entertainment, and art, then the defendant may be immune from liability;
but if it is classified as commercial speech, the defendant will be liable for
Preliminary Exploration of Constitutional Salience, 117 HARV. L. REV. 1765 (2004); T.
Alexander Aleinikoff, Constitutional Law in the Age of Balancing, 96 YALE L.J. 943
(1987).
111
Zacchini, 433 U.S. at 575–76. The plaintiff claimed that he suffered damages to the
extent of US$25,000. Id. at 575 n.12.
112
Id. at 576–77.
113
Id. at 578.
114
Id. at 579 (Powell, J., dissenting).
115
Daniel E. Wanat, Entertainment Law: An Analysis of Judicial Decision-making in
Cases Where a Celebrity’s Publicity Right is in Conflict with a User’s First Amendment
Right, 67 ALB. L. REV. 251, 255 (2003).
116
See Part IV below for a discussion of such uses as political speech by minority groups.
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the commercial exploitation of the associative value of the plaintiff’s
identity.117
Generally, the use of the celebrity identity by the media has a
presumptive constitutional protection known as the “newsworthiness”
exception which may be explained by both the First Amendment theories of
the marketplace of ideas and participatory democracy; this protection of the
media in conveying news to the masses has been broadly construed to
include virtually all types of information and entertainment communicated
by the media.118 Moreover, as a constitutionally protected medium, owing
in part to its being singled out by the Free Press Clause, the media may also
advertise itself by reproducing previous articles, programs, and news stories
containing the celebrity identity.119 In applying the newsworthiness
exception, courts are generally unconcerned if the media’s use of the
celebrity’s identity contributes to democratic deliberation.120 The strong
presumption in favor of the media is based primarily on the enlightenment
function of the First Amendment; thus a media defendant who invokes the
newsworthiness exception often escapes liability. However, for non-media
defendants, the courts are more circumspect about protecting such speech
under the newsworthiness exception.121 Unauthorized uses of celebrity
identities in merchandise like posters, buttons, t-shirts and games are often
117
As pointed out by McCarthy, “[i]mposing liability for the unpermitted taking of one’s
identity to attract attention to the product or its advertisement in no way impairs the
constitutional right to ‘the free flow of commercial information.’” MCCARTHY, supra note
8, § 7:3.
118
E.g., Guglielmi v. Spelling-Goldman Prods., 603 P.2d 454 (Cal. 1979); Stephano v.
News Group Publ’ns, Inc., 474 N.E.2d 580 (N.Y. 1984).
119
See generally MCCARTHY, supra note 8, §§ 7:14–7:18, 8:69–70; Montana v. San Jose
Mercury News, Inc., 40 Cal. Rptr. 2d 639 (Ct. App. 1995); Schivarelli v. CBS, Inc., 776
N.E.2d 693 (Ill. App. Ct. 2002); Booth v. Curtis Publ’g Co., 223 N.Y.S.2d 737 (App. Div.
1962); Stern v. Delphi Internet Servs. Corp., 626 N.Y.S.2d 694 (Sup. Ct. 1995); James M.
Treece, Commercial Exploitation of Names, Likenesses, and Personal Histories, 51 TEX. L.
REV. 637, 669–71 (1973).
120
Myskina v. Condé Nast Publ’ns., Inc., 386 F. Supp. 2d 409, 417 (S.D.N.Y. 2005);
Paulsen v. Personality Posters, Inc., 299 N.Y.S.2d 501, 506 (Sup. Ct. 1968). See generally
Dora v. Frontline Video, Inc., 18 Cal. Rptr. 2d 790 (Ct. App. 1993); Peter L. Felcher &
Edward L. Rubin, Privacy, Publicity, and the Portrayal of Real People by the Media, 88
YALE L.J. 1577, 1596–99 (1979).
121
The courts usually will not allow the non-media defendant to wrap “its advertising
message in the cloak of public interest, however commendable the educational and
informational value.” Beverley v. Choices Women’s Med. Ctr., Inc., 587 N.E.2d 275, 278
(N.Y. 1991). See also Downing v. Abercrombie & Fitch, 265 F.3d 994, 1002 (9th Cir.
2001); Abdul-Jabbar v. General Motors, 85 F.3d 407, 416 (9th Cir. 1996); Titan Sports,
Inc. v. Comic World Corp., 870 F.2d 85, 88 (2d Cir. 1989).
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held to be infringing uses despite the presence of some newsworthy
content.122
As this Article is concerned with uses of celebrity identity in political
speech, often by non-media speakers, the rest of this Part will focus on an
analysis of three judicial tests most prominently used by non-media
defendants to articulate a First Amendment defense—the direct balancing
approach, the transformative elements test, and the predominant purpose
test.123 At present, these approaches tend to ignore the political significance
of the celebrity sign, and overwhelmingly focus on the informational,
artistic, and entertainment aspects of the defendant’s use. The following
sections will discuss the limitations of these three approaches in their
evaluation of how particular uses of the celebrity identity contribute toward
advancing participation in democratic deliberation.
1.Direct Balancing Approach in Russen and Cardtoons
The direct balancing approach explicitly engages in the weighing of
benefits and harms to determine if the public interest served by the First
Amendment (e.g., expressing a political viewpoint, commentary, criticism,
or informing or entertaining the public) outweighs the public interest served
by publicity rights (e.g., recognizing the right to exploit the value of one’s
property, preventing unjust enrichment, or providing an incentive to engage
in artistic or sporting endeavor). Although it does not on its face accord
special status to political speech, its open-ended nature potentially allows
greater “weight” to be given to political speech relative to art or
entertainment that does not contribute anything of substantial value to
democratic debate. It can expose policy considerations requiring courts to
explain the constitutional value given to different types of speech. However,
its shortcomings lie in its potential for abstract application, as illustrated by
the courts balancing what they perceive to be the public interests that the
parties’ rights represent rather than the direct benefits and harms to each
party.
122
E.g., RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 47 cmt. c (1995); Bi-Rite
Enters., Inc. v. Button Master, 555 F. Supp. 1188 (S.D.N.Y. 1983); Winterland
Concessions Co. v. Sileo, 528 F. Supp. 1201 (N.D. Ill. 1981), aff’d 735 F.2d 257 (7th Cir.
1984); Rosemont Enters. Inc. v. Choppy Prods., Inc., 347 N.Y.S.2d 83 (Sup. Ct. 1972);
Lugosi v. Universal Pictures, 603 P.2d 425 (Cal. 1979).
123
Other tests include the “artistic relevance” test applicable to the title of artistic works
and the relatedness test proposed by the Restatement (Third). E.g., Rogers v. Grimaldi, 875
F.2d 994, 997 (2d Cir. 1989); RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 47 cmt. c
(1995).
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In Estate of Presley v. Russen,124 a New Jersey district court relied on
the reasoning of the Zacchini majority and weighed the public interest in the
informational value of the defendant’s speech against the “right of the
individual to reap the reward of his endeavors.”125 The court found the
defendant’s “use of the likeness of [Elvis Presley] in a performance mainly
designed to imitate that famous entertainer’s own past stage performances”
in The Big El Show “does not really have its own creative component and
does not have a significant value as pure entertainment.”126 Implicitly
endorsing the participatory theory, the court points out that “although [the
defendant’s use] contains an informational and entertainment element, the
show serves primarily to commercially exploit the likeness of Elvis Presley
without contributing anything of substantial value to society.”127
Fifteen years later, the Tenth Circuit in Cardtoons, L.C. v. Major
League Baseball Players Ass’n rejected the framework established in Lloyd
Corp. v. Tanner128 to reconcile the conflict between free speech and
property rights in the context of governmental regulation, and opted instead
to “directly balance the magnitude of the speech restriction against the
asserted governmental interest in protecting the intellectual property
right.”129 Relying on a combination of different First Amendment theories,
the court examined the value of parody of celebrities “both as social
criticism and a means of self-expression . . . in the marketplace of
ideas.”130 The court was attuned to how celebrities, as a result of their
symbolic significance, are “an important element of the shared
communicative resources of our cultural domain.”131 The court then
weighed the consequences of limiting the defendant’s right to free
speech132 against the effect of infringing the plaintiffs’ right of
124
513 F. Supp. 1339 (D.N.J. 1981).
Id. at 1361 (internal quotations omitted).
126
Id. at 1359.
127
Id. at 1359 (emphasis added).
128
407 U.S. 551, 567 (1972) (where it would be “an unwarranted infringement of property
rights to require [the owner] to yield to the exercise of First Amendment rights under
circumstances where adequate alternative avenues of communication exist”). The Zacchini
court did not consider the application of Lloyd Corp. to publicity claims.
129
Cardtoons, 95 F.3d 959, 972 (10th Cir. 1996). Legal commentators McCarthy and
Kwall have also endorsed this approach. MCCARTHY, supra note 8, § 8:39; Kwall, supra
note 11, at 63.
130
95 F.3d at 972.
131
Id. (referring to JOHN B. THOMPSON, IDEOLOGY AND MODERN CULTURE: CRITICAL
SOCIAL THEORY IN THE ERA OF MASS COMMUNICATION 3 (1990); Madow, supra note 66,
at 128).
132
Cardtoons, 95 F.3d at 972-73.
125
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publicity133 and concluded that the detrimental effect of upholding free
speech on the plaintiffs’ publicity rights in that case was negligible.134
Some courts in California135 and the Eighth Circuit136 have applied the
direct balancing approach, but it is unclear if other courts are likely to
follow suit. This form of ad hoc balancing has been applied in other areas of
constitutional law like procedural due process analysis137 and has received
some support from Supreme Court justices who advocate a more candid
approach to resolving free speech conflicts.138
For courts that favor a participatory theory of democracy, direct
balancing can be used to examine how the presence of expressive content in
the defendant’s speech contributes to democratic deliberation and debate. If
courts adopt the balancing approach, they ought to consider, on the one
hand, the content, form, and context of the defendant’s speech and the
benefit of the communication to both the defendant and the intended
recipient, and on the other hand, the harm to the celebrity individual in
having his or her identity used in that manner. This refined approach allows
courts to examine the constitutional value of the communication and better
evaluate the relative benefits and harms to the parties in a claim.
2.Transformative Elements Test in Comedy III
The California Supreme Court in Comedy III initiated the
“transformative elements” test, also known as the “transformative use”
test.139 It draws from the first factor of the fair use doctrine in copyright
law:140 an unauthorized use of celebrity identity would be permitted if it
was “transformative.” However, its lack of clear guidelines can encourage
judges to be art critics or base decisions on external factors like the fame of
133
Id. at 973–76.
Id. at 976.
135
E.g., Gionfriddo v. Major League Baseball, 114 Cal. Rptr. 2d 307, 315 (Ct. App.
2001); Perfect 10, Inc. v. Cybernet Ventures, Inc., 213 F. Supp. 2d 1146, 1182–83 (C.D.
Cal. 2002).
136
C.B.C. Distrib. & Mktg., Inc. v. Major League Baseball Advanced Media L.P., 505
F.3d 818, 823 (8th Cir. 2007).
137
E.g., Mathews v. Eldridge, 424 U.S. 319, 334–45 (1976).
138
E.g., Branzburg v. Hayes, 408 U.S. 665, 745–46 (1972) (Stewart, J., dissenting);
Dennis v. United States, 341 U.S. 494, 525 (1951) (Frankfurter, J., concurring); Barenblatt
v. United States, 360 U.S. 109, 126–27 (1959).
139
Comedy III Prods., Inc. v. Gary Saderup, Inc., 21 P.3d 797 (Cal. 2001).
140
Copyright Act of 1976, 17 U.S.C. § 107(1). See also Campbell v. Acuff-Rose Music,
Inc., 510 U.S. 569, 579–85 (1994); Blanch v. Koons, 467 F.3d 244, 251–56 (2d Cir. 2006);
Suntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257, 1268–69 (11th Cir. 2001); Castle
Rock Entm’t, Inc. v. Carol Publ’g Group, Inc., 150 F.3d 132, 142–43 (2d Cir. 1998).
134
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the artist.141 Furthermore, “fair use” has been criticized as one of
copyright’s “most nebulous and unpredictable aspects” and should only be
“invoked as a last resort [in publicity claims] after all other solutions have
been tried and found wanting.”142 In addition, the cryptic judicial comments
that literal depictions like Andy Warhol’s silkscreens of celebrities may also
be transformative if they carry a particular social message143 lend little
guidance to how a court may meaningfully determine what constitutes the
criteria for transformative use. As shown by recent California decisions, the
test is focused on visual transformation which can be overprotective of art
and entertainment that contribute little to the discussion of public issues, but
underprotective of political speech which may be contextually
transformative (because of its recoding) though not visually transformative.
However, dicta from the Comedy III court suggest that contextually
transformative uses could also be protected.
The key question for courts adopting this test is “whether the depiction
or imitation of the celebrity is the very sum and substance of the work in
question” (in which case the defendant is liable for commercial
appropriation of identity) or “whether a product containing a celebrity’s
likeness is so transformed that it has become primarily the defendant’s own
expression rather than the celebrity’s likeness” (in which case the First
Amendment trumps the plaintiff’s claim).144 The Comedy III court has also
looked to determine whether the marketability and economic value of the
challenged work derives primarily from the fame of the celebrity
depicted.145 In Comedy III, the court held that charcoal drawings of the
Three Stooges (used on T-shirts sold to the public) were not sufficiently
transformative. The court observed that “the transformative elements or
creative contributions that require First Amendment protection are not
confined to parody and can take many forms, from factual reporting . . . to
fictionalized portrayal . . ., from heavy-handed lampooning . . . to subtle
social criticism.”146
141
E.g., Kwall, supra note 11, at 58; Levine, supra note 11, at 216–19; Volokh, supra
note 11, at 913–25. See also Cardtoons, L.C. v. Major League Baseball Players Ass’n, 868
F. Supp. 1266, 1272 (N.D. Okla. 1994) (the analysis loses integrity when only one of the
fair use factors is considered).
142
143
Comedy III, 21 P.3d 797, 811 (Cal. 2001) (“Through distortion and the careful
manipulation of context, Warhol was able to convey a message that went beyond the
commercial exploitation of celebrity images and became a form of ironic social comment
on the dehumanization of celebrity itself.”).
144
Id. at 809.
145
Id. at 810.
146
Id. at 809.
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Thus it appears that a transformative use of identity may be determined
by reference to the content, form, and context of the expression. This
suggests that contextual transformations, such as the recoded use of a
celebrity identity to challenge the majoritarian values that the celebrity sign
represents, may merit First Amendment protection. But the court seemed to
contradict itself when it later emphasized the primacy of visual
transformation: that the inquiry is “in a sense more quantitative than
qualitative, asking whether the literal and imitative or the creative elements
predominate in the work.”147
Two years later, the California Supreme Court, in a case involving a
well-known comic book using depictions of musicians Edgar and Jonathan
Winter as wormlike creatures, applied the transformative elements test to
conclude that the use was visually transformative.148 The court initially
suggested that a qualitative or non-visual transformation by the defendant,
like communicating a different message from that which is ordinarily
conveyed by the celebrity sign, may be sufficiently transformative. But it
later held that “[w]hat matters is whether the work is transformative, not
whether it is parody or satire or caricature or serious social commentary or
any other specific form of expression.”149 This seems to indicate that as
long as the defendant’s depiction of a celebrity is visually different from his
or her literal likeness, it will meet the transformative standard without the
further need for the defendant to convey any discernible message.
Furthermore, the court appeared to reject a consideration of the origin of the
economic value of the defendant’s work, which was referred to in Comedy
III, when it added: “the question is whether the work is transformative, not
how it is marketed.”150 Subsequently, in Kirby v. Sega of America, the
California Court of Appeal found that the defendant’s videogame character
that was based on the likeness of the plaintiff, pop singer Keirin Kirby, was
transformative as the defendant had “added creative [visual] elements to
create a new expression.”151 The court declined to refine the transformative
elements test by considering whether the defendant’s use of the plaintiff’s
147
Id. (emphasis added).
Winter v. DC Comics, 69 P.3d 473, 480 (Cal. 2003).
149
Id. at 479. Cf. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 579 (1994) (“Parody
has an obvious claim to transformative value . . . . Like less ostensibly humorous forms of
criticism, it can provide social benefit, by shedding light on an earlier work, and, in the
process, creating a new one.”).
150
Winter, 69 P.3d at 479.
151
50 Cal. Rptr. 3d 607, 616 (Ct. App. 2006). The court ignored the fact that a Sega
affiliate had previously approached Kirby to endorse the game, but when negotiations
failed, the defendant nevertheless created a videogame character that appeared to be an
imitation of her performing persona. Id. at 613, 616.
148
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identity has to “say [anything]—whether factual or critical or comedic—
about a public figure.”152
In summary, the usefulness of this test appears confined to visual
depictions of the plaintiff, and the extent to which the defendant’s use has
departed from a realistic rendition of the plaintiff’s likeness.153 The judicial
application of the test in Winter, Kirby, and ETW Corp154 suggests that
these rules do not necessarily entail greater awareness and discussion of
public issues. On the other hand, political speech comprising literal
depictions of celebrities that are recoded by counterpublics to express a
particular viewpoint may not be sufficiently transformative under the
present judicial approach. Hence the current test tends to overprotect artistic
speech155 but underprotect political speech despite the latter’s greater
constitutional value.
3.Predominant Purpose Test in Doe
First proposed by intellectual property litigator Mark Lee,156 the
predominant purpose test was adopted by the Missouri Supreme Court in
Doe v. TCI Cablevision,157 protecting an unauthorized use of identity if it
was predominantly “expressive” but finding an infringement of the right of
publicity if it was predominantly “commercial.” Although this test can offer
significant protection to uses that convey predominantly expressive political
speech, it currently makes no distinction between the constitutional values
of political speech and apolitical art and entertainment, and it does not
provide clear criteria to resolve hybrid uses (e.g., where there is a mix of
political speech and commercial speech, like selling of celebrity-related
merchandise in connection with a political rally).
The Missouri court was especially critical of the transformative
elements test, observing that it gave “too little consideration to the fact that
many uses of a person’s [identity] have both expressive and commercial
components” and operated to “preclude a cause of action whenever the use
of [identity] is in any way expressive, regardless of its commercial
152
Id. at 616.
McCarthy is especially critical of the transformative elements test. MCCARTHY, supra
note 8, § 8:72.
154
332 F.3d 915 (6th Cir. 2003). See discussion below in Part IVB2.
155
It is worth noting the Sixth Circuit’s critical observation that “crying ‘artist’ does not
confer carte blanche authority to appropriate a celebrity’s name” and “crying ‘symbol’
does not change that proposition and confer authority to use a celebrity’s name when none,
in fact, may exist.” Parks v. LaFace Records, 329 F.3d 437, 454 (6th Cir. 2003).
156
Lee, supra note 11, at 488–500.
157
110 S.W.3d 363, 373 (Mo. 2003).
153
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exploitation.”158 Hence, the predominant purpose test is purportedly
designed to address works that are both expressive and commercial,159 and
may be stated thus:
If a product is being sold that predominantly exploits the
commercial value of an individual’s identity, that product
should . . . not be protected by the First Amendment, even
if there is some “expressive” content in it that might qualify
as “speech” in other circumstances. If, on the other hand,
the predominant purpose of the product is to make an
expressive comment on or about a celebrity,
the expressive
values could be given greater weight.160
Unlike the transformative elements test, the mere presence of any
visually expressive elements will not bar a right of publicity claim; for the
defendant to escape liability, the use of the celebrity’s identity must rise
above bare transformation to significant expressive commentary. The Doe
court found, inter alia, that the defendant’s use of hockey player Tony
Twist’s identity as the name and persona of a comic book character and its
targeted marketing to the plaintiff’s fan base to be “predominantly a ploy to
sell comic books and related products rather than an artistic or literary
expression” and hence “free speech must give way to the right of
publicity.”161
The predominant purpose test arguably uses “commercial advantage”
as its foundation, remaining more faithful to the origins of the right of
publicity as expressed in Haelan Laboratories and Zacchini. This test has
been rejected by the California courts,162 and it has not been explicitly
applied by jurisdictions outside Missouri.163 It does have particular
shortcomings.164 Although the test purports to strike a better balance
between free speech and property rights, its definitional approach based on
158
Id. at 374.
Levine, supra note 11, at 220.
160
Doe, 110 S.W.3d at 374 (citing Lee, supra note 11, at 500).
161
Id. at 374.
162
E.g., Kirby v. Sega of America, Inc., 50 Cal. Rptr. 3d 607, 617 (Ct. App. 2006).
163
However, the methodology of other courts in focusing on the intent of the defendant in
examining whether commercial exploitation of the associative value of the plaintiff’s
identity has taken place resembles the “predominant purpose” test. E.g., Pooley v. National
Hole-In-One Ass’n, 89 F. Supp. 2d 1108, 1113 (D. Ariz. 2000).
164
E.g., Michael S. Kruse, Missouri’s Interfacing of the First Amendment and the Right of
Publicity: Is the “Predominant Purpose” Test Really That Desirable?, 69 MO. L. REV. 799
(2004); F. Jay Dougherty, All the World’s Not A Stooge: The “Transformativeness” Test
for Analyzing a First Amendment Defense to a Right of Publicity Claim Against
Distribution of a Work of Art, 27 COLUM. J. L. & ARTS 1, 14 (2003).
159
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the judicial determination of the defendant’s predominant purpose does not,
unlike the Cardtoons approach, engage in a balancing exercise that exposes
the values and interests at stake. Moreover, the test fails to consider the
hierarchy of First Amendment-protected speech, and offers little guidance
to judges in relation to the determination of what qualifies as predominantly
expressive.
Perhaps the predominant purpose test produced the correct result in
Doe, aided by the defendant’s admission that the use was not to make any
expressive comment about Twist165 and the sustained efforts of the
defendant in exploiting the associative value of Twist’s identity through
marketing merchandise directly to his fan base.166 In other situations, where
the defendant asserts the presence of a parodic element or other social
commentary,167 or where the defendant has not so blatantly marketed its
product to the plaintiff’s fans,168 or where the defendant makes a living by
selling works of art,169 it is unclear what criteria the courts will use to
determine the “predominant purpose” of the defendant.
While the predominant purpose test does not explicitly rely on a
particular theory of the First Amendment, its focus on protecting expressive
comment is compatible with a participatory understanding of democracy. It
appears that the defendant’s unauthorized use of a celebrity’s identity will
most likely be deemed “predominantly expressive” if it contributed to
debate on public issues or drew attention to the subordinate position of
minority groups and, at the same time, the celebrity’s fan base has not been
specifically targeted as potential customers of the defendant’s product. In
practice, the court’s multi-factor analysis to determine whether expressive
or commercial components predominate resembles the direct balancing
approach. The judicial evaluation of the different factors in Doe may well
have been performed under the rubric of “direct balancing” where the
constitutional value of the defendant’s comic book, in terms of its critical
commentary and contribution to debate about public issues, is taken into
account, and policy considerations more openly discussed.
165
Doe, 110 S.W.3d at 374.
Id. at 371.
167
E.g., Winter v. DC Comics, 69 P.3d 473 (Cal. 2003); Cardtoons, L.C. v. Major League
Baseball Players Ass’n, 95 F.3d 959 (10th Cir. 1996); White v. Samsung Electronics
America, Inc., 971 F.2d 1395 (9th Cir. 1992) (White I). For a criticism of the predominant
purpose test on this issue, see, e.g., John Grady et al., A New “Twist” for the “Home Run
Guys”?: An Analysis of the Right of Publicity versus Parody, 15 J. LEGAL ASPECTS SPORT
267, 283-87 (2005).
168
E.g., Kirby v. Sega of America, Inc., 50 Cal. Rptr. 3d 607 (Ct. App. 2006); Parks v.
LaFace Records, 329 F.3d 437 (6th Cir. 2003).
169
E.g., ETW Corp. v. Jireh Publ’g, Inc., 332 F.3d 915 (6th Cir. 2003).
166
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C.Interim Conclusions
As this Part has demonstrated, the three main judicial approaches used
in claims involving non-media defendants are not based on any clearly
defined theory of the First Amendment. They also do not adequately
advance the deliberative democratic ideals that the Supreme Court suggests
are important in the cases concerning governmental regulation of speech.
Unlike these cases, only a handful of right of publicity decisions have
accorded any prominence to the discussion of the value of the defendant’s
expression to democratic deliberation.170
Certain commercial uses of the celebrity identity can transcend their
apparent status as mere celebrity memorabilia depending on the content,
form, and context of the message conveyed by the defendant speaker.
Political speech extends beyond expressing support for or opposition to
candidates and issues about elections and public office. As the Supreme
Court has noted on numerous occasions, the First Amendment “was
fashioned to assure unfettered interchange of ideas for the bringing about of
political and social changes desired by the people.”171 Part IV will show
how the analysis of the political symbolism of the celebrity semiotic sign in
cultural studies can assist courts in determining when the non-media use of
the celebrity identity may be categorized as “purely political speech in a
special category [that] helps considerably to clear the decks for a clearer
analysis of the First Amendment significance of celebrity merchandise.”172
It will examine cultural studies perspectives on the use of the celebrity
personality by minority groups in contemporary society to express their
cultural—and political—identities, and explore how this understanding can
help shape the development of the First Amendment defense.
IV. IDENTITY POLITICS AND THE CELEBRITY: A CULTURAL STUDIES
PERSPECTIVE
If the celebrity semiotic sign is recognized to represent the values of a
majoritarian public, then the debate and opposition to these “encoded”
ideals may be expressed by using the same signs in a “recoded” manner,
and such counterpublic uses can therefore be categorized as “political
speech.” In order for political speech to be given adequate breathing space,
it would be beneficial to understand the free speech issues in publicity
170
E.g., Estate of Presley v. Russen, 513 F. Supp. 1339, 1359 (D.N.J. 1981); Paulsen v.
Personality Posters, Inc., 299 N.Y.S.2d 501, 507 (Sup. Ct. 1968).
171
Connick v. Myers, 461 U.S. 138, 145 (1983) and N.Y. Times Co. v. Sullivan, 376 U.S.
254, 269 (1964) (quoting Roth v. United States, 354 U.S. 476, 484 (1957)).
172
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claims within the context of a First Amendment theory that “preserves the
independence of public discourse so that a democratic will within a
culturally heterogeneous state can emerge under conditions of neutrality,
and so that individuals can use the medium of public discourse to persuade
others to experiment in new forms of community life.”173
Section A explores, through the lens of cultural studies, how the
celebrity personality may be used in the construction and contestation of
social and political identities and the significance that particular celebrity
personalities may have for minority groups in expressing a particular
viewpoint. Section B argues that the use of celebrity signs by these groups
may be categorized as political speech in First Amendment doctrine, and
examines how the three judicial tests considered above may be refashioned
to take this into account.
A.The Celebrity Personality as a Political Site of Interpretive Practice
and Contested Meanings
This section demonstrates that cultural studies perspectives can
complement and augment a participatory theory of the First Amendment
because uses of the celebrity identity by those who are “subordinated” to
communicate their disagreement with majoritarian values and to draw wider
public attention to their social positions can be viewed as political speech.
This contention was mooted three decades ago in Richard Dyer’s star
studies regarding the gay community’s use of the Judy Garland star sign;
and other scholars today can be seen to draw on the classic idea of the
political significance of star signs, with the support of the general writings
of Roland Barthes and Stuart Hall about recoding of semiotic signs. First
mentioned in Stars, and later more thoroughly explored in Heavenly Bodies,
Dyer’s analysis of the use of the Judy Garland semiotic sign by the gay
community provided a valuable foundation for subsequent studies on the
use of celebrity personalities by subcultural groups in their identity
formation.174 Described as a “foundational observation” in the study of the
cultural function of celebrities,175 Dyer claims that “[s]tars articulate what it
is to be a human being in contemporary society.”176 Most celebrities may be
seen “as representing dominant values in society, by affirming what those
173
Post, The Constitutional Concept of Public Discourse, supra note 48, at 684.
See also CHRIS ROJEK, CELEBRITY 70 (2001) (“Judy Garland’s iconic status in gay
culture partly derived from her ability to cope with disapproval, rejection and
marginalization”); Madow, supra note 66, at 194; Rosemary J. Coombe, Objects of
Property and Subjects of Politics: Intellectual Property Laws and Democratic Dialogue, 69
TEX. L. REV. 1853, 1876–77 (1991).
175
GRAEME TURNER, UNDERSTANDING CELEBRITY 103 (2004).
176
DYER, HEAVENLY BODIES, supra note 13, at 7.
174
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33
values are in the ‘hero’ types (including those values which are relatively
appropriate to men and women) or as alternative or subversive types that
express discontent with or rejection of dominant values.”177 His work on the
politics and cultural dominance of whiteness178 also exposes an AngloSaxon hegemony said to be characteristic of American society. According
to Dyer’s pioneering analyses, celebrities can have an ideological function
of not only reiterating dominant values, but also concealing prevalent
contradictions or social problems.179 More generally, cultural scholars have
argued that “identities can function as points of identification and
attachment only because of their capacity to exclude, to leave out, to render
‘outside’ abjected.”180
Dyer’s Stars,181 which laid the groundwork for the celebrity studies of
Marshall182 and Turner,183 appears to have influenced the thinking of legal
commentators like Rosemary Coombe184 and Michael Madow.185 In the
later Heavenly Bodies, Dyer contends, “Stars are also embodiments of the
social categories in which people are placed and through which they have to
make sense of their lives . . . categories of class, gender, ethnicity, religion,
sexual orientation, and so on.”186
Using a postmodern analysis, Coombe argues how the value of a
celebrity’s image may reside “in its character as a particular human
embodiment of a connection to a social history” when one is provoked to
reflect upon one’s “own relationship to the cultural tradition in which the
star’s popularity is embedded.”187 Coombe’s description of the political
potential of the contemporary celebrity draws much from Dyer: “The
celebrity image is a cultural lode of multiple meanings, mined for its
177
DYER, STARS, supra note 13, at 52. See also DYER, HEAVENLY BODIES, supra note 13,
at 12 (“the star phenomenon reproduces the overriding ideology of the person in
contemporary society”).
178
RICHARD DYER, WHITE (1997).
179
DYER, STARS, supra note 13, at 27–28. See also TURNER, supra note 175, at 102–07;
Paul McDonald, Reconceptualising Stardom, in RICHARD DYER, STARS 175, 192–93 (2d
ed. 1998).
180
Hall, Introduction: Who Needs “Identity?”, supra note 24, at 5 (emphasis in original).
See also Hall, The Local and the Global, supra note 24; LACLAU, supra note 24; BUTLER,
supra note 24.
181
DYER, STARS, supra note 13.
182
E.g., MARSHALL, supra note 14.
183
E.g., TURNER, supra note 175.
184
E.g., Coombe, supra note 174; ROSEMARY J. COOMBE, THE CULTURAL LIFE OF
INTELLECTUAL PROPERTIES: AUTHORSHIP, APPROPRIATION, AND THE LAW (1998).
185
Madow, supra note 66.
186
DYER, HEAVENLY BODIES, supra note 13, at 18.
187
Rosemary J. Coombe, Author/izing the Celebrity: Publicity Rights, Postmodern
Politics, and Unauthorized Genders, 10 CARDOZO ARTS & ENT. L.J. 365, 375 (1992).
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symbolic resonances and, simultaneously . . . invested with . . . social
longings and political aspirations.”188
In highlighting the “radical potential of the stars,” Dyer further
observes that there is a political dimension to the use of stars for repressed
groups like “the working class, women, blacks, gays – who have been
excluded from the culture’s system of representations in all but marginal
and demeaning forms”;189 the subordinated social groups are using these
star signs which are associated with the dominant ideology to appropriate
power for themselves in a democracy.190
In the U.S., the “structural barriers or limits of class [that] would
obstruct [the] process of cultural absorption” have not assisted the
“democratic enfranchisement of all citizens within political society.”191
Reading culture politically can reveal how celebrity signs can “reproduce
the existing social struggles in their images, spectacle, and narrative.”192
Indeed there is a significant emphasis in contemporary cultural studies on
the notion of audience participation—be it their complicity or resistance—
in the hegemony of cultural texts propagated by the media and other
producers.193 It is in these studies of semiotic disruptions that one may find
the relevant tools for establishing a conceptual framework within First
Amendment doctrine that addresses the political agenda of the active
audience. Individuals outside the majoritarian value system often have an
“alternative foci of integration” and are thus defined as “sub-cultural,”194
“subaltern,”195 or “counterpublics;”196 and there is an increasing judicial
188
Id. at 365.
DYER, STARS, supra note 13, at 183–84.
190
See also McDonald, supra note 179, at 192.
191
Stuart Hall, The Rediscovery of “Ideology:” Return of the Repressed in Media Studies,
in CULTURE, SOCIETY AND THE MEDIA 56, 60 (Michael Gurevitch et al. eds., 1982).
192
DOUGLAS KELLNER, MEDIA CULTURE: CULTURAL STUDIES, IDENTITY AND POLITICS
BETWEEN THE MODERN AND THE POSTMODERN 56 (1995).
193
E.g., JOHN FISKE, MEDIA MATTERS: EVERYDAY CULTURE AND POLITICAL CHANGE
(1996); DAVID MORLEY, THE NATIONWIDE AUDIENCE (1980); IEN ANG, WATCHING
DALLAS: SOAP OPERA AND THE MELODRAMATIC IMAGINATION (1985); IEN ANG,
DESPERATELY SEEKING THE AUDIENCE (1991); THE AUDIENCE AND ITS LANDSCAPE (James
Hay et al. eds., 1996); NICK ABERCROMBIE & BRIAN LONGHURST, AUDIENCES: A
SOCIOLOGICAL THEORY OF PERFORMANCE AND IMAGINATION (1998); AUDIENCES AND
PUBLICS: WHEN CULTURAL ENGAGEMENT MATTERS FOR THE PUBLIC SPHERE (Sonia
Livingstone ed., 2005); JONATHAN BIGNELL, BIG BROTHER: REALITY TV IN THE TWENTYFIRST CENTURY (2005); JONATHAN GRAY, WATCHING WITH THE SIMPSONS: TELEVISION,
PARODY, AND INTERTEXTUALITY (2006).
194
Hall, supra note 191, 62.
195
Lawrence Grossberg, Identity and Cultural Studies: Is That All There Is?, in
QUESTIONS OF CULTURAL IDENTITY 87, 92 (Stuart Hall & Paul Du Gay eds., 1996).
196
MICHAEL WARNER, PUBLICS AND COUNTERPUBLICS 119 (2002).
189
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35
recognition of these groups asserting their alternative views in the political
sphere.197
Building on Jürgen Habermas’s work on the public sphere,198 Michael
Warner’s analysis of the struggles that bring individuals together as a public
postulates that “subaltern counterpublics” usually articulate alternative
power relations with the dominant public defined by race, gender, sexual
orientation, and other subordinated status.199 Counterpublics are “counter”
to the extent that they try to supply different ways of imagining
participation within a political or social hierarchy by which its members’
identities are formed and transformed.200 According to Warner, a
counterpublic maintains “an awareness of its subordinate status . . . [with
respect] not just to ideas or policy questions, but to the speech genres and
modes of address that constitute the public.”201
As “icons of democracy and democratic will,”202 each celebrity persona
can be a powerful signifier that is synonymous with the dominant culture.
Especially with the increase in celebrity political activism through each
celebrity individual championing particular causes, and even appearing at
congressional hearings,203 the persona of well-known individuals like Oprah
Winfrey, an ardent Barack Obama supporter, can embody very distinct
political ideologies. Thus a counterpublic use of a particular celebrity
persona can acquire a political dimension, and may be seen as a “discursive
space . . . for contesting and engendering the American character.”204 Hall
has also defined the taking of an existing meaning and appropriating it for
new meanings as “trans-coding”205 and explained that repressed groups may
197
E.g., Hurley v. Irish-Am Gay, Lesbian & Bisexual Group of Boston, 515 U.S. 557, 557
(1995) (where the defendant professed to express its members’ pride as openly gay,
lesbian, and bisexual individuals and support their march in the New York St Patrick’s Day
parade); Raymen v. United Senior Ass’n Inc., 409 F. Supp. 2d 15, 22–23 (D.D.C. 2006)
(where the defendants were protected by the First Amendment in the use of the plaintiff’s
images in an advertising campaign which challenged various public policy positions taken
by the American Association of Retired Persons).
198
E.g., JÜRGEN HABERMAS, THE STRUCTURAL TRANSFORMATION OF THE PUBLIC
SPHERE: AN INQUIRY INTO A CATEGORY OF BOURGEOIS SOCIETY (Thomas Burger trans.,
1989); HABERMAS AND THE PUBLIC SPHERE (Craig Calhoun ed., 1992).
199
WARNER, supra note 196, at 44–63, 117–20.
200
Id. at 121–2.
201
Id. at 119.
202
MARSHALL, supra note 14, at 246.
203
See generally Kathryn Gregg Larkin, Star Power: Models for Celebrity Political
Activism, 9 VA. SPORTS & ENT. L.J. 155 (2009).
204
Madhavi Sunder, Authorship and Autonomy as Rites of Exclusion: The Intellectual
Propertization of Free Speech in Hurley v. Irish-American Gay, Lesbian and Bisexual
Group of Boston, 49 STAN. L. REV. 143, 164–65 (1996).
205
Stuart Hall, The Spectacle of the ‘Other,’ in REPRESENTATION: CULTURAL
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use trans-coding strategies to reverse stereotypes, substitute “negative”
portrayals with “positive” ones or contest subordinate representations from
within.206
For example, with reference to global sport icon David Beckham, the
dominant coding for the Beckham sign may be construed to represent not
just sexual desirability, but also reinforcing the hegemony of white
heterosexual desirability (thus excluding the representation of the non-white
non-heterosexual).207 Viewed in this manner, those opposing this
majoritarian signification may want to recode the Beckham sign to highlight
their subordinate or hidden status in society, and to increase the visibility of
their political participation through the use of the celebrity symbol. In the
words of Garry Whannel, known for his writings on the signification of
sporting celebrities, the image of Beckham that departs “from the dominant
masculinised codes of footballer style” may also represent “a challenge to
the heterosexual conformity of sport’s modes of male self-presentation.”208
Thus, if one accepts that ideological challenges may be effected through
certain recoded uses of the celebrity sign,209 then one could use a celebrity
sign like Beckham to interrogate “the categories of whiteness, men, ruling
class, heterosexuality, and other dominant powers and forms that ideology
legitimates, showing the social constructedness and arbitrariness of all
social categories and the binary system of ideology.”210
In summary, from a cultural studies perspective, the political agenda of
counterpublics or subaltern groups may be best communicated to
REPRESENTATIONS AND SIGNIFYING PRACTICES 223, 270 (Stuart Hall ed., 1997). The term
“transfunctionalize” has also been used to describe how subcultures assign new and often
contradictory meanings to signs as understood by mainstream society. PAUL NATHANSON,
OVER THE RAINBOW: THE WIZARD OF OZ AS A SECULAR MYTH OF AMERICA 241 (1991).
206
Hall, supra note 205, at 270–75. For example, the genre of real person slash (“RPS”)
or real person fiction (“RPF”) which features celebrity individuals is a form of fan fiction
that adopts the public personae of celebrities as their own characters, building a fictional
universe based on the supposed real-life histories of these celebrities. E.g., Sonia K. Katyal,
Performance, Property, and the Slashing of Gender in Fan Fiction, 14 AM. U.J. GENDER
SOC. POL’Y & L. 461, 489 (2006).
207
See, e.g., The Walt Disney Co., Stars Play Out Disney Park Fantasies in New Images
Unveiled by Annie Leibovitz, DISNEY.COM,
http://corporate.disney.go.com/corporate/moreinfo/beckham_parks012607.html (last visited
Oct. 13, 2010) (describing a common representation of Beckham emphasizing his
“whiteness”).
208
GARRY WHANNEL, MEDIA SPORTS STARS: MASCULINITIES AND MORALITIES 202
(2002).
209
Arguments have been made regarding the use of trademarks and copyrighted works in
a similar fashion. See, e.g., COOMBE, THE CULTURAL LIFE OF INTELLECTUAL PROPERTIES,
supra note 184; Aoki, supra note 66; Katyal, supra note 206; Leslie A. Kurtz, The
Independent Legal Lives of Fictional Characters, 1986 WIS. L. REV. 429 (1986).
210
KELLNER, supra note 192, at 61.
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mainstream society through the use of widely recognized celebrity signs to
which the public have ascribed particular representative values or
characteristics. For example, with respect to gay and lesbian communities,
legal commentator Madhavi Sunder explains that “[c]entral to this project is
a cultural play with signs and symbols aimed, first, at illustrating that gays,
lesbians, and bisexuals always have been and always will be part of the
‘normal’ operations of society and, second, challenging the normality of
such operations by exposing the hidden homosexual.”211
Thus the celebrity signs that are constitutive of cultural heritage—like
“Judy Garland,” “Oprah Winfrey,” “Tiger Woods,” and “David
Beckham”—each transcend the human individuals who bear these names
and are symbolic of the ideological hegemonies of social identities in
contemporary society. Their recoding by counterpublics may be viewed as
“[p]ractices of articulating social difference [that] are central to democratic
politics.”212 The next section will investigate when such practices ought to
be categorized as political speech that merits the highest level of First
Amendment protection.
B.Using Celebrity Signs within First Amendment Doctrine
1.Rethinking the Use of the Celebrity Sign as Political Speech
The recoding practices of subaltern groups, as Coombe astutely points
out, may “seem distant, if not utterly divorced from the legal regime of
personality rights”213 and “are neither readily appreciated using current
juridical concepts nor easily encompassed by the liberal premises that
ground our legal categories.”214 But closer inspection reveals that through
different modes of expressing the celebrity personality—like adulation,
parody, satire, and burlesque—subaltern groups are able to advance their
political ideologies and assert alternative identities that “affirm both
community solidarity and the legitimacy of their social difference by
empowering themselves with cultural resources that the law deems the
properties of others.”215
At first sight, the public forum doctrine216 in First Amendment
211
Sunder, supra note 204, at 167.
COOMBE, THE CULTURAL LIFE OF INTELLECTUAL PROPERTIES, supra note 184, at 295.
See also WARNER, supra note 196, at 210.
213
Coombe, supra note 187, at 386.
214
COOMBE, THE CULTURAL LIFE OF INTELLECTUAL PROPERTIES, supra note 184, at 6.
215
Coombe, supra note 187, at 366.
216
The Supreme Court has identified three categories of forum in which government
property and institutions are divided for the purposes of analysing permissible regulation of
expressive activity: traditional public, designated public and non-public. See, e.g., Perry
212
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jurisprudence appears to have some relevance for right of publicity laws as
one may argue that the celebrity persona, because of the audience’s active
role in its production, circulation, and consumption, can be treated as a
quasi-public forum.217 However, it is inapposite to apply public forum
principles to uses of the celebrity identity for expressive activity as the
celebrity persona lacks the quintessential qualities of government control,
physical location, and public access that are evident in cases which
primarily dealt with disputes in relation to shopping arcades and malls,
pedestrian sidewalks and schools.218 Courts have to consider whether there
is sufficient state action to “transform government property into a public
forum.”219 Moreover, the public forum rules have only been applied to
determine whether government regulation of expressive activity in a
particular category of forum was subject to heightened scrutiny; generally,
content- or viewpoint-based legislation in traditional and designated public
fora are subject to strict scrutiny while time-place-manner restrictions may
be permitted. Although a number of attempts have been made to categorize
privately owned shopping malls as public fora, the Supreme Court has
steadfastly held that there is no constitutional right to engage in expressive
activity on such private properties.220 In addition, in order to convert a
privately owned business location into a public forum, courts have required
“either a symbiotic relationship or a sufficiently close nexus between the
government and the private entity so that the ‘power, property and prestige’
Educ. Ass’n v. Perry Local Educators’ Ass’n, 460 U.S. 37 (1983); United States v.
Kokinda, 497 U.S. 720 (1990); Arkansas Educ. Television Comm’n v. Forbes, 523 U.S.
666 (1998).
217
E.g., Leslie Kim Treiger-Bar-Am, The Moral Right of Integrity: A Freedom of
Expression, in NEW DIRECTIONS IN COPYRIGHT LAW VOLUME 2 127, 157 (Fiona
MacMillan ed., 2006). The assertion that “the public forum argument could be raised by
modifiers of speech” with respect to cultural icons like Mickey Mouse or Barbie is
unfortunately not explained.
218
E.g., Hotel Empls. & Rest. Emps. Union, Local 100 v. City of New York Dep’t of Parks
& Recreation, 311 F.3d 534, 540 (2d Cir. 2002) (distinguishing between a public and a
non-public forum for free speech purposes, a court should examine the forum’s physical
characteristics and the context of the property’s use, including its location and purpose);
See also Kokinda, 497 U.S. at 726–30; PruneYard Shopping Ctr. v. Robins, 447 U.S. 74,
79–85 (1980).
219
Perry, 460 U.S. at 47 (1983). The state action doctrine, related to the public forum
doctrine, requires a significant nexus, not just between the state and the private actor, but
also between the state and the allegedly unconstitutional act, before the court would find
state action. See, e.g., Alexander, supra note 99, at 23–26.
220
See Hudgens v. NLRB, 424 U.S. 507, 520 (1976). See also Lloyd Corp. v. Tanner, 407
U.S. 551, 569 (1972) (holding that “property [does not] lose its private character merely
because the public is generally invited to use it for designated purposes”). See generally
PruneYard, 447 U.S. 74, 80.
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39
of the state has been in fact placed behind the challenged conduct.”221
Unlike the disputes in public fora cases regarding the physical space on
which expressive activity takes place, the celebrity identity is an intangible
symbol which would usually form an integral part of the alleged expressive
activity—it is not a functional equivalent of town halls, public parks, and
downtown business districts. It is more appropriate to consider other
approaches in First Amendment jurisprudence to give effect to the semiotic
significance of celebrity signs.
The participatory theory of the First Amendment supports the
protection of the making of “representations about self, identity,
community, solidarity, and difference” or the articulation of political and
social aspirations using the celebrity sign within a “dialogic democracy”222
as political speech. In First Amendment doctrine, such recoded circulations
can be viewed as a form of political activism akin to Raymen v. United
Senior Ass’n Inc.,223 characterized by their ability to “reverse perceptions of
social devaluation or stigma, articulate alternative narratives of national
understanding, and challenge exclusionary imaginaries of citizenship.”224
In this light, the recoding of celebrity signs by gay and lesbian
counterpublic groups may be conceived as political speech expressing an
opposition to “heteronormativity”225 that embodies “a constellation of
practices that everywhere disperses heterosexual privilege as a . . . central
organizing index of social membership.”226 Similar arguments may be made
for other subaltern categories of race, gender or class. For example, the
celebrity signs of Tiger Woods or Jacqueline Onassis, as articulated through
221
City of West Des Moines v. Engler, 641 N.W.2d 803, 806 (Iowa 2002) (quoting State
v. Wicklund, 589 N.W.2d 793, 802 (Minn. 1999)). Generally, the courts have declined to
extend any right of free expression on privately owned property. E.g., Shad Alliance v.
Smith Haven Mall, 488 N.E.2d 1211, 1218 (N.Y. 1985); Illinois v. DiGuida, 604 N.E.2d
336, 348–349 (Ill. 1992). But California, interpreting its State Constitution, has held that
mall owners must permit such access in certain instances, and has employed a balancing
test to resolve the issue. E.g., Golden Gateway Ctr. v. Golden Gateway Tenants Ass’n, 29
P.3d 797, 822–823 (Cal. 2001) (Werdegar, J., dissenting); Albertson’s, Inc. v. Young, 131
Cal. Rptr. 2d 721, 735 (Cal. Ct. App. 2003).
222
COOMBE, supra note 184, at 248–49.
223
409 F. Supp. 2d 15 (D.D.C. 2006).
224
COOMBE, supra note 184, at 12. See also Kembrew McLeod, The Private Ownership
of People, in THE CELEBRITY CULTURE READER 649, 658 (P. David Marshall ed., 2006)
(explaining how communities may use celebrity signs, like John Wayne, that represent a
certain ideal in mainstream society as a “resistive reading”). See also Hurley v. IrishAmerican Gay, Lesbian & Bisexual Group of Boston, 515 U.S. 557 (1995).
225
Heteronormativity has been defined as “the institutions, structures of understanding,
and practical orientations that make heterosexuality seem . . . privileged.” WARNER, supra
note 196, at 188 n.3.
226
Id. at 195.
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widely distributed photographic and televisual images, especially in
advertising, embody certain values for the majoritarian public.227 Therefore,
their recoding, like an ironic use of the Tiger Woods image by the National
Association for the Advancement of Colored People (NAACP)228 to
highlight the discrimination of colored people or on t-shirts as “an extensive
. . . message of social advocacy” to express their pride in being associated
with a successful African-Asian American icon in a festival or parade,229
can be categorized as political speech. One could argue that their pertinent
viewpoints significantly contribute to democratic participation and
debate.230
However, conferring on such uses the status of political speech does
not guarantee immunity from liability for every subaltern group or
individual speaker who tacks on a political message to unauthorized uses of
the celebrity sign. As McCarthy cautioned, “[I]f all it took for a defendant
to wrap itself in the First Amendment was to add an appropriate ‘Express
Your Support for ______’ slogan on all celebrity merchandise, then the
right of a celebrity to control the commercial property value in his or her
identity would be destroyed.”231
In assessing a publicity claim, especially in the context of advertising,
courts should distinguish whether the recoding of the celebrity sign is
“genuinely a political statement” or an attempt to “appropriate ‘difference’ .
. . in order to sell a product.”232 Accordingly, if one views the First
Amendment as informed by a pragmatic cultural studies approach,
regardless of whatever formulation the court adopts, one should consider:
(i) the content of the expressive elements of the use of the celebrity
personality (e.g., whether it was to advance a political cause or affirm the
political identity of a particular social group); (ii) the form of expression
(e.g., whether the use was commercial in the form of advertising, character
merchandising or product sale, or non-commercial, or a hybrid); and (iii)
the context of the use (e.g., whether it was to express a particular viewpoint
227
See generally ETW Corp. v. Jireh Publ’g, Inc., 332 F.3d 915 (6th Cir. 2003); Onassis
v. Christian Dior-New York, Inc., 472 N.Y.S.2d 254 (N.Y. Sup. Ct. 1984).
228
“The mission of the NAACP is to ensure the political, educational, social and
economic equality of rights of all persons and to eliminate racial hatred and racial
discrimination.” NAACP, Our Mission, http://www.naacp.org/pages/our-mission (last
visited Oct. 18, 2010).
229
Ayres v. City of Chicago, 125 F.3d 1010, 1014 (7th Cir. 1997). See also One World
One Family Now v. City & Cnty. of Honolulu, 76 F.3d 1009, 1012 (9th Cir. 1996);
Heffron v. Int’l Soc’y for Krishna Consciousness Inc., 452 U.S. 640, 647 (1981).
230
NAACP also seeks, inter alia, to “remove all barriers of racial discrimination through
democratic processes.” NAACP, supra note 228.
231
232
Hall, supra note 205, at 273 (emphasis in original).
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41
at a parade, rally, or some other public forum).233 In propertizing identity,
right of publicity laws should aim to strike a balance between protecting, on
the one hand, both the proprietary right of the celebrity individual to exploit
the associative value of identity and his or her right as an individual speaker
not to propound a particular point of view,234 and on the other hand, the
right of others to express a political viewpoint through connotative recoded
uses of the celebrity sign. The next section will evaluate how the three main
judicial tests may take into account such politically expressive uses.
2. Revisiting the Current Judicial Approaches
This section will focus on examining how the three main judicial tests
can accommodate the classification of recoded uses of the celebrity identity
as political speech within their analyses. To illustrate their
operationalization, the revised tests will be applied to the facts of two cases
which have attracted significant commentary and judicial discussion,
Samsung Electronics America v. White, 508 U.S. 951 (1993) (involving the
attractive blonde Anglo-Saxon television personality Vanna White) and
ETW Corp. v. Jireh Publishing, Inc., 332 F.3d 915 (6th Cir. 2003)
(involving African-Asian American sport icon Tiger Woods).
In White, the defendant Samsung had depicted a robot dressed in a wig,
gown, and jewelry reminiscent of Vanna White’s hair and dress on the
Wheel of Fortune show in an advertisement for videocassette recorders
(VCRs). The Ninth Circuit rejected the defendant’s First Amendment
defense which posited that the advertisement was a parody of Vanna
White’s television act and was therefore protected speech. As a semiotic
sign, White is widely associated with a consumption culture epitomized by
the game show, or can be seen to represent, like Marilyn Monroe and other
blonde Anglo-Saxon celebrities, the privilege of “whiteness” in
contemporary American society.235 If the sign of Vanna White were
233
The location of the speech is important. In Ayres, the selling of expressive t-shirts by
the Marijuana Political Action Committee to be worn at city-sponsored festivals in Grant
Park was held to be political speech. 125 F.3d at 1013–14.
234
See Hurley v. Irish-American Gay, Lesbian & Bisexual Group of Boston, 515 U.S.
557, 574 (1995) (recognizing the Council’s “right as a private speaker to shape its
expression by speaking on one subject while remaining silent on another”).
235
RICHARD DYER, WHITE 73, 138 (1997). Dyer also comments that through “narrative
structural positions, rhetorical tropes and habits of perception . . . white people in white
culture are given the illusion of their own infinite variety” and is one of the means by
which subordinated social groups are “categorized and kept in their place.” Id. at 12. See
also DYER, supra note 13, at 17-63; Grant McCracken, Marilyn Monroe, Inventor of
Blondness, in GRANT MCCRACKEN, CULTURE AND CONSUMPTION II: MARKETS, MEANING
AND BRAND MANAGEMENT 93, 93–96 (2005).
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recoded as a critique of these ideals, and particularly by subaltern groups
who seek to “achieve equality of rights and eliminate race prejudice among
the citizens of the United States,”236 then the relevant speech may be
categorized as political speech. In Raymen, for example, the court found
that the advertisement, which features the photograph of the plaintiffs
kissing, was part of a campaign by USA Next challenging various public
policy positions purportedly taken by the American Association of Retired
Persons.237 The court found that the photograph “discusses public policy
issues that are currently the subject of public debate”238 and held that USA
Next, a nongovernmental organization, was therefore protected by the First
Amendment against liability for right of publicity infringement. However,
the Samsung print advertisement in White, unlike the Raymen or infamous
Benetton advertisements,239 contains no discernible political expression that
contributes to democratic debate.
In ETW Corp, the defendant Jireh Publishing, a commercial company,
released for sale over 5,000 prints bearing Tiger Woods’s likeness based on
a painting by Rick Rush titled The Masters of Augusta, which
commemorates Woods’s historic victory.240 In the foreground of Rush’s
236
For example, as reflected in one of the principal objectives of the NAACP in its
constitution. NAACP, supra note 228.
237
Raymen v. United Senior Ass’n Inc., 409 F. Supp. 2d 15, 19 (D.D.C. 2006). The
photograph featured the plaintiffs, a gay couple, kissing, and was said to be used in the
advertisement “to incite viewer passions against the AARP because of its alleged support
of equal marriage rights for same-sex couples.” Id.
238
Id. at 24.
239
Benetton describes its brand as “a subverter of stereotypes” and by “associating its
name with the representation of conflict and pain,” it has consistently drawn attention to
political and social issues by portraying in its advertisements images that include death row
prisoners, a man dying of AIDS, a soldier gripping a human thigh bone, and a ship being
stormed by emigrants. BENETTON GROUP, UCB ADVERTISING PRESENTATION,
http://press.benettongroup.com/ben_en/about/campaigns/history/pubblicita.pdf (last visited
Nov. 18, 2009). See also Stuart Elliott, Benetton Stirs More Controversy, N.Y. TIMES, July
23, 1991 at D22, available at http://www.nytimes.com/1991/07/23/business/the-mediabusiness-advertising-benetton-stirs-morecontroversy.html?scp=5&sq=benetton%20ads&st=cse; Deborah Feyerick, Victims’ Rights
Advocates Denounce Benetton ‘Death Row’ Ads, CNN.COM (Jan. 18, 2000),
http://archives.cnn.com/2000/STYLE/fashion/01/18/benetton.ads/.
240
ETW Corp. v. Jireh Publ’g, Inc., 332 F.3d 915 (6th Cir. 2003) (the majority arguably
used a combination of the different approaches from Kozinski’s dissent in White, the
transformative elements test in Comedy III, and some balancing drawn from Comedy III, to
dismiss Woods’s claim). The majority’s opinion has spawned numerous articles critical of
its reasoning. E.g., Michael Sloan, Too Famous for the Right of Publicity: ETW Corp. and
the Trend Towards Diminished Protection for Top Celebrities, 22 CARDOZO ARTS & ENT.
L.J. 903 (2005); Michael Suppappola, Is Tiger Woods’s Swing Really a Work of Art?
Defining the Line Between the Right of Publicity and the First Amendment, 28 W. NEW
ENG. L. REV. 57 (2005).
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43
painting are three views of Woods in different poses; in the background is
the Augusta National Clubhouse and likenesses of famous past golfers
looking down on Woods.241 The accompanying text contains laudatory
narrative of Woods’s achievement at Augusta.242 The Sixth Circuit
dismissed both Woods’s right of publicity and Lanham Act claims, noting
that “sports and entertainment celebrities have come to symbolize certain
ideas and values in our society and have become a valuable means of
expression in our culture,”243 but without discussing the constitutional value
of the defendant’s speech. Cultural commentators C. L. Cole and David
Andrews argue that Woods as a popular American icon was “coded as a
multicultural sign of color-blindness,”244 and such “racially-coded
celebrations [can] deny social problems and promote the idea that America
has achieved its multicultural ideal.”245 This dominant coding of the Woods
celebrity sign246 offers myriad possibilities for recoding by subaltern
African-American or Asian-American groups to assert their particular
viewpoints about the role of race and ethnicity in public policy. However,
the almost literal rendition of Woods’s image and its contextual setting
against the background of other famous golfers and the clubhouse lack
important elements of criticism or parody that usually suggest a high
constitutional value.247 The defendant’s depiction of Woods, despite its
momentous occasion, contains no definable political expression and
contributes little to any public awareness or discussion of the issues relating
to minority groups in American society.
241
ETW, 332 F.3d at 918.
Id. at 919 n.1.
243
Id. at 937–38.
244
C.L. Cole & David L. Andrews, America’s New Son: Tiger Woods and America’s
multiculturalism, in SPORT STARS: THE CULTURAL POLITICS OF SPORTING CELEBRITY 70,
81 (David L. Andrews & Steven J. Jackson eds., 2001). Woods has also described himself
as a “Cablinasian”—a combination of Caucasian, black, Indian, and Asian. Id. (quoting
The Oprah Winfrey Show (television broadcast, Apr. 24, 1997)).
245
Id. at 70.
246
Woods has been said to be a “multicultural myth” perpetrated by advertisers,
particularly by Nike in their commercial advertisements as an “emblem” of “racial progress
. . . that combined race, sport, masculinity, national healing, and proper citizenship.” Id. at
78, 82.
247
Parody and satire have served for generations as a means of criticizing public figures,
exposing political injustice and communicating social ideologies—all objectives deserving
of First Amendment protection. See, e.g., Hustler Mag., Inc. v. Falwell, 485 U.S. 46
(1988); Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994); Leibovitz v. Paramount
Pictures Corp., 137 F.3d 109 (2d Cir. 1998).
242
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a. Direct Balancing Approach
The Supreme Court has acknowledged a “fundamental interdependence
exists between the personal right to liberty and the personal right in
property” and both are “basic civil rights.”248 It has also been observed that
“[p]rivate property rights, despite the public interests to which they have
been compelled to yield during the past century, remain firmly entrenched
in American constitutional fabric.”249 Direct balancing can take into account
this special status of property rights, and at the same time, give “greater
weight” to political speech by counterpublics that use the celebrity identity
to challenge majoritarian beliefs or positions, compared to that accorded to
art or entertainment that do not express a political viewpoint. Presently, the
balancing test tends to be applied at an abstract level and does not clearly
balance the benefit to the defendant speaker against the harm to the
celebrity plaintiff, including the plaintiff’s own First Amendment rights, if
the right of publicity was not enforced.
Of the three tests examined, its open-ended nature best allows courts to
consider the content, form, and context of the use of the celebrity identity
and to explicitly evaluate the relative harms and benefits to the parties
involved.250 In recognizing the recoding possibilities of the celebrity
identity for political speech, the factors that a court may consider include (i)
the primary motivation of the defendant speaker in using the celebrity
plaintiff’s identity, (ii) the nature of the defendant’s commercial enterprise,
(iii) the content of the defendant’s expressive speech, (iv) the medium of the
defendant’s expression, (v) the occasion and location of the defendant’s use,
(vi) the presence of alternative avenues of communication, and (vii) the
intended audience of the defendant’s communication.
In evaluating the harm to the plaintiff, the court may consider (i) the
nature and extent of damage to the plaintiff’s ability to exploit the
associative value of his or her identity,251 and (ii) whether the defendant’s
products were a substitute for products offered by the plaintiff or the
248
E.g., Lynch v. Household Fin. Corp., 405 U.S. 538, 552 (1972).
Friedelbaum, supra note 92, at 1262 n. 266.
250
After a lengthy review of various approaches to incorporate First Amendment
considerations into right of publicity doctrine, McCarthy, citing the Cardtoons direct
balancing approach with approval, has also concluded that one needs to “meet the conflict
head on” and “[t]he balance must be laboriously hacked out case by case.” MCCARTHY,
supra note 8, § 8:39.
251
E.g., Doe v. TCI Cablevision, 110 S.W.3d 363, 367 (Mo. 2003) (where the plaintiff
introduced evidence that the defendant’s use “resulted in a diminution in the commercial
value of his name as an endorser of products” and had in fact cost the plaintiff endorsement
opportunities).
249
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45
plaintiff’s authorized licensees.252 This approach can better provide
“adequate breathing space to the freedoms protected by the First
Amendment”253 and is compatible with the Supreme Court’s current
analysis involving speech on private property that requires balancing of the
competing interests of the property owner and of the public with respect to
the particular property to determine expressive access.254
White v. Samsung
In dismissing the defendant’s First Amendment defense, the Ninth
Circuit found that the case involved “a true advertisement run for the
purpose of selling Samsung VCRs” and “the ad’s spoof of Vanna White and
Wheel of Fortune is subservient and only tangentially related to the ad’s
primary [commercial] message.”255 Even if the court had used a direct
balancing approach, the low constitutional value of Samsung’s speech in the
context of an advertisement for VCRs contributes little to the debate of
public issues and would have been outweighed by the damage to White’s
ability to exploit the associative value of her identity.
ETW Corp v. Jireh Publishing
The majority’s “single-sentence attempt at balancing” was criticized by
the dissent as falling “woefully short of any meaningful consideration of the
matter.”256 In phrasing the issue as one that requires “balancing the societal
and personal interests embodied in the First Amendment against Woods’s
property rights,”257 the former will inevitably prevail.258 As indicated above,
a better approach to balancing is to consider the direct harms and benefits to
252
E.g., Comedy III Prods., Inc. v. Gary Saderup, Inc., 21 P.3d 797, 808 (Cal. 2001);
Cardtoons, L.C. v. Major League Baseball Players Ass’n, 95 F.3d 959, 973-76 (10th Cir.
1996); Winter v. DC Comics, 69 P.3d 473, 479 (Cal. 2003); Charles J. Harder & Henry L.
Self III, Schwarzenegger vs. Bobbleheads: The Case for Schwarzenegger, 45 SANTA
CLARA L. REV. 557, 575-76 (2005).
253
Boos v. Barry, 485 U.S. 312, 322 (1988) (quoting Hustler Mag., Inc. v. Falwell, 485
U.S. 46, 56 (1988)).
254
E.g., PruneYard Shopping Ctr. v. Robins, 447 U.S. 74, 82-88 (1980); Hudgens v.
NLRB, 424 U.S. 507, 518-21 (1976); Lloyd Corp., Ltd. v. Tanner, 407 U.S. 551, 563
(1972). See also Albertson’s, Inc. v. Young, 131 Cal. Rptr. 2d 721, 727 (Ct. App. 2003).
255
White v. Samsung Electronics Am., Inc., 971 F.2d 1395, 1401 (9th Cir. 1992) (White
I).
256
ETW Corp. v. Jireh Publ’g, Inc., 332 F.3d 915, 949 (6th Cir. 2003) (Clay, J.,
dissenting).
257
Id. at 938.
258
E.g., id. at 959; Carson v. Here’s Johnny Portable Toilets, Inc., 698 F.2d 831, 841
(Kennedy, J., dissenting) (6th Cir. 1983).
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the parties involved.259 Rush’s depiction of Woods arguably constitutes the
type of conventional depiction of the celebrity likeness in traditional
merchandising that appeals to fans. Clearly the content of the defendant’s
expression may not be classified as political speech for African-American
or Asian-American counterpublic groups; the sale of the prints was not in
the context of expressing a particular viewpoint about social or political
identity. When one weighs the relatively low constitutional value of the
defendant’s artwork against the interference with the proprietary publicity
right of Woods, it appears that Jireh Publishing may not avail itself of the
protection of the First Amendment.
b.Transformative Elements Test
Under its present formulation as applied in Winter and Kirby, the
transformative elements test may restrict subaltern groups from
appropriating celebrity signs for the construction of their social identities in
everyday activities unless the celebrity’s likeness has been visually
transformed. For example, the groups may be prohibited from using a literal
depiction (e.g., a photograph) of a particular celebrity on silkscreened tshirts or other merchandise bearing the celebrity’s image for sale to group
members to highlight a public issue like the subordinated social position of
the homosexual community.
However, depending on the identity of the speaker and the context of
the unauthorized use, certain expressive uses of merchandise may qualify as
political speech, like the wearing of black armbands in Tinker v. Des
Moines Independent Community School District or flag-burning in Texas v.
Johnson.260 For example, the sale of t-shirts to be worn at a Gay Pride
Parade by counterpublic groups like Lambda Legal,261 bearing the images
of actors like Heath Ledger, Jake Gyllenhaal, and Tom Hanks—who have
been honored at the Academy Awards for playing gay characters in
critically acclaimed movies—should be viewed as “transformative” because
the recoded meaning of the celebrity signs now carries significant political
content. Moreover, in Comedy III, where the transformative elements test
was first articulated, the court had emphasized that “the transformative
259
E.g., Cardtoons, L.C. v. Major League Baseball Players Ass’n, 95 F.3d 959, 971-76
(10th Cir. 1996).
260
See Texas v. Johnson, 491 U.S. 397, 405-06 (1989) (flag-burning); Tinker v. Des
Moines Indep. Comty. Sch. Dist., 393 U.S. 503, 505 (1969) (wearing black armbands).
261
Lambda Legal is a U.S. “national organization committed to achieving full recognition
of the civil rights of lesbians, gay men, bisexuals, transgender people and those with HIV
through impact litigation, education and public policy work.” Lambda Legal, About
Lambda Legal, available at http://www.lambdalegal.org/about-us (last visited Nov. 18,
2009).
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47
elements or creative contributions that require First Amendment protection .
. . can take many forms . . . from heavy-handed lampooning to subtle social
criticism.”262 Thus, by examining the content, form, and context of the
impugned use, the transformative elements test may be adapted to protect
non-visually transformative uses of the celebrity identity.
White v. Samsung
The transformative elements test had not been formulated when White
was handed down. Although there may not be a politically expressive
message that presents a critique of the privilege of whiteness in American
society, Samsung’s use of a robot evocative of Vanna White nevertheless
can be argued to be contextually transformative as a recoding of her Wheel
of Fortune persona to comment on the interchangeability of the
contemporary celebrity. The advertisement’s suggestion—that a human role
may be replaced by a robot in 2012 A.D.—may be construed as a critical
comment on the artificiality or dehumanization of the contemporary
celebrity sufficient to meet the transformative standard.263
ETW Corp. v. Jireh Publishing
Applying the transformative elements test, the Sixth Circuit majority
held that Rush’s artwork was more than a literal rendition of the celebrity
golfer, and that the artist had “added a significant creative component of his
own to Woods’ identity.”264 However, the painting of Woods was a
conventional depiction of the celebrity golfer that resembled the literal
charcoal drawing of the Three Stooges in Comedy III. In a tenuous
application of the test, the majority concluded that the artwork was
transformative because the work conveyed a message “that Woods himself
will someday join that revered group”265 and it “communicates and
celebrates the value our culture attaches to such events.”266 By attempting to
262
Comedy III Prods., Inc. v. Gary Saderup, Inc., 21 P.3d 797, 809 (Cal. 2001) (citing
Andy Warhol’s literal silkscreened celebrity portraits as a First Amendment-protected
critique of the celebrity phenomenon).
263
Id. at 810–11 (referring to John Coplans, Jonas Mekas and Calvin Tomkins, Andy
Warhol 52 (1970)).
264
ETW Corp. v. Jireh Publ’g, Inc., 332 F.3d 915, 938 (6th Cir. 2003). In a highly critical
dissent, Circuit Judge Clay would have entered summary judgment for the plaintiff based
on the lack of transformative elements in Rush’s literal rendition of Woods, finding that it
is “nearly identical to that in the poster distributed by Nike.” Id. at 959–60 (Clay, J.,
dissenting).
265
Id. at 936.
266
Id.
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analyze the constitutional value of the defendant’s use, the Sixth Circuit
appears to have refined the transformative elements test in a manner that
contrasts sharply with the refusal of the California courts to do so.267 But as
explained earlier, Rush’s painting of Woods conveys no discernible
political expression that contributes to democratic deliberation, and the
Sixth Circuit should have followed the reasoning in Comedy III and found a
right of publicity infringement.268
c. Predominant Purpose Test
In Beverley v. Choices Women’s Medical Center, although the New
York court did not use Missouri’s predominant purpose test, it appears that
the defendant’s commercial use of the plaintiff’s identity must have
significant constitutional value in order to avail itself of the First
Amendment defense:
[A]lthough women’s rights and a host of other worthy
causes and movements are surely matters of important
public interest, a commercial advertiser . . . may not
unilaterally neutralize or override the long-standing and
significant statutory privacy protection by wrapping its
advertising message in the cloak of public interest, however
commendable the educational and informational value.269
In Raymen, the use of a photograph of the plaintiffs in an advertisement
by USA Next to challenge various public policy positions was rightly
categorized as political speech that trumped the plaintiffs’ right of
publicity.270 Under the predominant purpose test, non-governmental
organizations and civic groups like NAACP and Legal Lambda that
highlight the subordinated position of minorities in American society and
lobby the government for policy changes are more likely to benefit from the
protection of the First Amendment than commercial enterprises. But to
protect all speech that is “predominantly expressive” does not make a
distinction between speech that arguably has a higher constitutional value
(because it contributes to public debate about political issues) and speech
267
See Winter v. DC Comics, 69 P.3d 473, 477–80 (Cal. 2003); cf. Campbell v. AcuffRose Music, Inc., 510 U.S. 569, 579 (1994); see also Kirby v. Sega of Am., Inc., 50 Cal.
Rptr. 3d 607, 616 (Ct. App. 2006); see also text, supra notes 149 and 152.
268
See also criticisms of the application of the transformative elements test by the ETW
Corp majority in Franke, supra note 11, at 970–4; Webner & Lindquist, supra note 11, at
200–01; Sloan, supra note 240, at 918–20.
269
Beverley v. Choices Women’s Med. Ctr., Inc., 587 N.E.2d 275, 279 (N.Y. 1991).
270
See 409 F. Supp. 2d 15, 19 (D.D.C. 2006); see also text, supra notes 237–238.
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49
that has a comparatively lower value (because it merely entertains or is
simply aesthetic).
White v. Samsung
Most advertisements will be deemed “predominantly commercial”
unless the advertisement clearly conveys a politically expressive viewpoint
that draws public attention to particular social issues or is critical of a public
figure or public policy. As explained in Part IVB1, the content, form, and
context of the use must be examined. However, it is doubtful a commercial
defendant like Samsung can show that an advertisement is predominantly
expressive when its product is also depicted in the advertisement. Unlike
the Benetton advertisements which poignantly highlight political issues like
religious, racial, sexual, and moral conflicts,271 the White advertisement,
bearing the caption “The VCR you’ll tape it on. 2012 A.D.,”272 suggests an
infringement of the plaintiff’s publicity right as it is predominantly
commercial with “[the] primary message: ‘buy Samsung VCRs.’”273
ETW Corp. v. Jireh Publishing
The Masters of Augusta appears to be a commemorative work
produced for sale to the public and does not contain “expressions of value,
opinion, or endorsement”274 of significant democratic value. The work does
not critically comment on a specific attribute of Tiger Woods, like his
ethnic heritage or the values he embodied, or draw attention to political or
social issues facing subaltern groups. Neither Rush nor Jireh Publishing had
recoded the Woods sign, and the literal rendition simply reproduces the
dominant preferred reading of the Woods celebrity sign as a national hero
consistent with his commercial positioning.275 Consequently, the Sixth
Circuit should have decided that the freedom of speech would not have
been impermissibly abridged by the prohibition of the sale of the prints.
In contrast, if the NAACP or other subaltern groups had produced
literal depictions of Woods for sale to support their advocacy efforts, such
271
See BENETTON GROUP ADVERTISING PRESENTATION, supra note 239.
See John F. Hyland & Ted C. Lindquist III, Torts – White v. Samsung Electronics Am.,
Inc.: The Wheels of Justice Take an Unfortunate Turn, 23 GOLDEN GATE U. L. REV. 299,
301 n. 20 (1993).
273
White v. Samsung Electronics Am., Inc., 971 F.2d 1395, 1401 (9th Cir. 1992) (White
I).
274
Hurley v. Irish-Am. Gay, Lesbian & Bisexual Grp. of Boston, 515 U.S. 557, 573
(1995); See also McIntyre v. Ohio Elections Comm’n, 514 U.S. 334, 341-42 (1995).
275
See Cole & Andrews, supra note 244, 73–81 (examining Nike’s “Hello World” and “I
am Tiger Woods” advertising campaigns).
272
50
2/7/2011 9:49 AM
uses arguably may be construed as politically expressive. In these
circumstances, the commercial nature of the sale of prints and any other
products bearing Woods’s likeness can be said to be incidental to the
predominant purpose of constructing particular social identities for minority
groups by these non-profit counterpublics which will in turn empower their
political participation. For example, the use of the images of Ledger,
Gyllenhaal, and Hanks—as a result of the connotations of their celebrity
signs from the widely lauded gay characters they have portrayed in the
movies Brokeback Mountain and Philadelphia—by Legal Lambda to
convey the subordinated status of homosexuals in society and to advocate
policy changes can also be considered political speech. But this does not
mean that counterpublics have carte blanche to appropriate the identities of
celebrities under the banner of political speech. Each case has to be
evaluated based on the content, form, and context of the use, and one needs
to be on the lookout for defendants who tack on a political message to
products that exploit the associative value of identity in the hope of securing
First Amendment protection.276
V. SUMMARY & CONCLUSIONS
The investigation of judicial decisions, legal commentary, and cultural
studies writings undertaken in this Article has yielded the following
conclusions.
First, a participatory theory in which the First Amendment is seen to be
advancing public decision-making in a democracy suggests that expressive
uses of the celebrity identity, particularly by subaltern groups, that
contribute to democratic processes have a higher constitutional value than
either artistic speech or entertainment. This observation is reinforced by the
Supreme Court’s consistent positioning of political speech at the apex of the
speech hierarchy. The cultural studies analysis of politically expressive uses
of the celebrity identity also augments the participatory argument that
political speech ought to be given greater weight in the First Amendment
defense as articulated in right of publicity claims.
Second, in the absence of clear Supreme Court precedent governing the
treatment of free speech arguments by non-media defendants in publicity
claims, lower courts have developed various tests that do not cohere with
the prevailing speech hierarchy that appears to accord political speech the
highest constitutional value. Most of First Amendment jurisprudence is
focused on an examination of governmental control of speech, but this
Article has examined the private control of speech through right of publicity
laws with the assistance of the lens of cultural studies. Its major conclusion
276
See supra note 231 and accompanying text.
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51
is that existing tests under the First Amendment defense as argued in
publicity claims do not make a clear distinction between the constitutional
value of different kinds of speech, and consequently can unduly restrict
political speech.
Third, the broad definition of political speech in First Amendment
jurisprudence would easily encompass the recoding of celebrity signs by
counterpublics that enables “the practice of persons sharing common views
banding together to achieve a common end [which] is deeply embedded in
the American political process.”277 As such, cultural studies can inform the
revision of existing judicial tests to better take into account the content,
form and context of politically expressive uses of the celebrity identity
when engaging in an evaluation of the conflict between property and speech
rights.
However, a cautionary note is warranted about the judicial use of
cultural studies. In reaching its decision in ETW Corp., the Sixth Circuit
majority departed from the traditional examination of the clash between
publicity and First Amendment rights, and attempted, in a most
unsatisfactory and inadequate manner, to import cultural studies into its
judicial reasoning. The court dedicated just three paragraphs to a cursory
mention of the symbolic value of the celebrity sign and the associative
value of Woods’s identity,278 without any discussion of the uses of the
celebrity sign by audiences in their interpretive practices. If the court were
to consider the political significance of recoded celebrity signs and the
consequent constitutional value of the defendant’s speech that incorporated
Woods’s identity, the outcome in ETW Corp. might have been different.
Unfortunately, the court devoted much of its analysis to the rationales for
recognizing a right of publicity279 instead of how social groups use the
celebrity personality as a communicative resource in a manner that deserves
First Amendment protection.280 This type of brief reference to cultural
studies as ex-post facto rationalization is not a desirable practice.281 But, as
277
NAACP v. Claiborne Hardware Co., 458 U.S. 886, 906 (1982); Connick v. Myers, 461
U.S. 138, 145 (1983); N.Y. Times Co. v. Sullivan, 376 U.S. 254, 269, 270 (1964); Roth v.
United States, 354 U.S. 476, 484 (1957); NAACP, 458 U.S. at 906, 913–14; Garrison v.
Louisiana, 379 U.S. 64, 74–75 (1964).
278
ETW Corp. v. Jireh Publ’g, Inc., 332 F.3d 915, 938 (6th Cir. 2003).
279
Id. at 931–38. Contra id. at 955 (Clay, J., dissenting) (“Despite various commentary
and scholarship … the fact remains that the right of publicity is an accepted right”).
280
Passing comments were made with regard to the use of the celebrity personality as an
important expressive and communicative resource to “symbolize individual aspirations,
group identities and cultural values,” but no further analysis was undertaken of what
particular uses merit First Amendment protection. Id. at 935.
281
Jones, supra note 103, at 957 (‘in many instances the courts’ reasoning is result
oriented, with the court creating a test that validates the result it wants to reach in the given
52
2/7/2011 9:49 AM
this Article has shown, judicial reference to cultural studies could be much
more productive. Elsewhere I have argued that cultural studies can also be
beneficial to the analyses of the elements of evocation282 and commercial
appropriation283 in a right of publicity claim.
In conclusion, this Article has demonstrated that cultural writings on
the political value of the celebrity sign, its meaning and potential uses by
counterpublics or subaltern groups, can add to the richness of First
Amendment jurisprudence. It contributes to the legal scholarship through its
examination of the potential importance of the celebrity sign in political
advocacy efforts and its illustration of how these insights may be
incorporated into the judicial tests. Courts like the Sixth Circuit can benefit
from a structured analysis of how cultural studies may be meaningfully
integrated into the First Amendment defense. Regardless of the confusing
morass that may surround the application of First Amendment
considerations to a right of publicity claim, recognizing the potential of the
celebrity sign to function as a political site of contestations offers valuable
assistance to the refinement of the current tests.
case’).
282
David Tan, Much Ado About Evocation: A Cultural Analysis of “Well-Knownness” and
the Right of Publicity, 28 CARDOZO ARTS & ENT. L.J. 313 (2010).
283
David Tan, Affective Transfer and the Appropriation of Commercial Value: A Cultural
Analysis of the Right of Publicity, 9 VA. SP. & ENT. L.J.272 (2010).
2/7/2011 9:49 AM
Issue 1
53
Antitrust & the Bowl Championship Series
Nathaniel Grow*
ABSTRACT
This Article analyzes the potential antitrust liability of the Bowl
Championship Series (“BCS”), college football’s current system for
selecting the participants of both the national championship game as well as
other highly desirable post-season bowl games. The BCS has recently been
attacked by various politicians and law enforcement officials, who allege
that the system constitutes an illegal restraint of trade due to its preferential
treatment of universities from traditionally stronger conferences, at the
expense of teams from historically less competitive conferences.
Meanwhile, the academic literature considering the antitrust status of the
BCS is mixed, with most recent commentaries concluding that the BCS
alleviated any antitrust concerns when it revised its selection procedures in
2004.
Contrary to these recent scholarly analyses, this Article argues that the
BCS remains vulnerable to antitrust attack on two primary grounds. First,
the BCS continues to be susceptible to an illicit group boycott claim, insofar
as it distributes revenue unequally and without justification to the detriment
of universities from the historically less competitive conferences. Second,
the BCS can be attacked as an illegal price fixing scheme, both by enabling
formerly independent, competing conferences and bowl games to
collectively determine the amount of revenue to be distributed to BCS
participants, as well as by eliminating any competition between certain BCS
bowls for the sale of their broadcast rights to television networks.
However, the BCS appears less susceptible to a claim of illegal tying,
despite its collective marketing of the television broadcast rights for the
BCS bowl games, because television networks are not actually coerced into
purchasing the broadcast rights to an unwanted bowl game. Therefore,
although the outcome of any antitrust trial is notoriously difficult to predict,
this Article concludes that the BCS remains quite vulnerable to antitrust
attack.
*
Assistant Professor of Legal Studies, Terry College of Business, University of Georgia.
The author would like to thank Kassi Hamner for her research assistance, and Alan Fishel
for his constructive feedback.
54
2/7/2011 9:49 AM
TABLE OF CONTENTS
I. INTRODUCTION .................................................................................... 54 II. HISTORY OF THE COLLEGE FOOTBALL BOWL SYSTEM AND THE BCS
........................................................................................................... 59 A. The Evolution of the Bowl System ....................................................... 59 B. The Formation and Development of the Bowl Championship Series . 63 III. A BRIEF OVERVIEW OF THE RELEVANT ANTITRUST LAW PROVISIONS
........................................................................................................... 69 IV. ASSESSING THE STRENGTH OF THE POTENTIAL ANTITRUST CLAIMS
AGAINST THE BCS ............................................................................ 75 A. The BCS as an Illicit Group Boycott ................................................... 75 B. The BCS and Price Fixing .................................................................. 88 C. The BCS as an Illegal Tying Arrangement ......................................... 95 V. CONCLUSION ........................................................................................ 97 I. INTRODUCTION
It has been declared “flawed”1 and “unfair,”2 a “joke,”3 a “fraud,”4 and
an “abomination.”5 Senator Orrin Hatch of Utah has called it “unAmerican,”6 while Representative Joe Barton of Texas has likened it to
“communism.”7 It is the Bowl Championship Series, or “BCS,” the system
through which college football’s annual national champion is crowned.
Created through an elaborate series of agreements between various
collegiate conferences and post-season bowl games,8 the BCS uses a system
of human polls and computer rankings to select not only the two
participants in the national championship game, but also the teams that will
1
Barker Davis, Same Old Song for BCS: One-loss Mix Likely to Bring Controversy, WASH.
TIMES, Nov. 27, 2006, at C04.
2
Tim Stephens, BCS is ‘Un-American’, ORLANDO SENTINEL, Mar. 26, 2009, at C3.
3
Randall Mell, BCS Most Likely to Remain Joke, PITT. POST-GAZETTE, Dec. 11, 2004, at
B-2.
4
Id.
5
Mark Bradley, SEC Championship: Result Exposes BCS as a No. 1 Abomination,
ATLANTA JOURNAL-CONST., Dec. 9, 2001, at 12D.
6
Stephens, supra note 2, at C03.
7
Nick Canepa, Congress Takes Shot at Righting BCS Wrong, S.D. UNION-TRIB., May 7,
2009, at D-1.
8
See Bowl Championship Series FAQ, BCSFOOTBALL.ORG,
http://www.bcsfootball.org/news/story?id=4809793 (last accessed Oct. 5, 2010).
(discussing various agreements).
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2/7/2011 9:49 AM
55
play in four of the other most prestigious bowl games.9 In the process, the
BCS not only controls access to the most desirable post-season games, but
also decides which conferences and universities will receive the significant
guaranteed financial payments that accompany an invitation to a BCS bowl
game, payouts that can surpass $19 million for a single bowl appearance.10
Because the selection of teams to participate in BCS bowls has rarely
been without controversy—especially with respect to the selection of teams
to play for the national championship—the system has been criticized
frequently since its inception in 1998.11 This criticism predominantly
alleges that major college football’s system for determining a champion
lacks the fairness of the systems used by other collegiate and professional
team sports, which crown their champions via multi-team, post-season
playoff tournaments.12 Such critics include President Barack Obama, who
vowed shortly after his election to “throw his weight around” to convince
college football to adopt a playoff system.13
While the lack of a playoff is probably the most frequent complaint
levied against the BCS, the system faces perhaps more serious criticism on
another front. Specifically, various politicians and law enforcement
officials are increasingly suggesting that the BCS constitutes an anticompetitive and illegal restraint of trade in violation of federal antitrust law.
For example, Senator Hatch directly accused the BCS of violating the
Sherman Antitrust Act during recent Senate Judiciary Committee
hearings,14 while Utah Attorney General Mark Shurtleff has threatened to
9
BCS Selection Procedures, BCSFOOTBALL.ORG, http://www.bcsfootball.org/
news/story?id=4819597 (last accessed Oct. 5, 2010) (discussing the calculation of the BCS
standings).
10
See Bowl Championship Series Five Year Summary of Revenue Distribution 2005-06
through 2009-10, NCAA.ORG,
http://www.ncaa.org/wps/wcm/connect/a547f60042494ced83f8d7132e10b8df/BCS++Reve
nue+Distribution+by+Conference+2009-10.pdf?MOD=AJPERES&CACHEID=
a547f60042494ced83f8d7132e10b8df (last accessed Nov. 8, 2010).
11
See David Scott Moreland, Comment, The Antitrust Implications of the Bowl
Championship Series: Analysis Through Analogous Reasoning, 21 GA. ST. U. L. REV. 721,
724 (2005) (“Since its inception, the BCS has been a ‘constant source of debate and
controversy.’” (quoting Don Markus, Judiciary Discussions Increase Chances for Change
in BCS System; Playoff Still Isn’t Likely to be Seriously Considered, BALT. SUN, Sept. 5,
2003, at 10D)).
12
See, e.g., Katherine McClelland, Comment, Should College Football’s Currency Read
“In BCS We Trust” or is It Just Monopoly Money?: Antitrust Implications of the Bowl
Championship Series, 37 TEX. TECH L. REV. 167, 174–75 (2004).
13
Michael Wilbon, When the President-Elect Talks, The BCS Should Listen, WASH. POST,
Nov. 19, 2008, at E01 (quoting President Obama’s statements on the television program 60
Minutes).
14
Associated Press, Hatch Calls for BCS Investigation, ESPN.COM,
56
2/7/2011 9:49 AM
initiate legal proceedings against the BCS under antitrust law.15 Even the
U.S. Department of Justice has acknowledged that it is exploring the
possibility of launching its own antitrust investigation of the system.16
Critics of the BCS typically allege that the system violates antitrust law
through its favoritism of universities belonging to six of the traditionally
most powerful, so-called “BCS Conferences,”17 at the expense of
universities competing in the historically less successful, so-called “nonBCS Conferences.”18 Specifically, under the current BCS selection
procedures, the champion of each of the six BCS Conferences is guaranteed
a berth in a BCS bowl game regardless of its place in the final BCS
rankings, while champions of non-BCS Conferences must finish in the top
sixteen of the BCS Standings in order to be eligible for an automatic bid.19
Even then, only the highest ranking non-BCS Conference champion is
guaranteed an invitation to a BCS bowl; other highly ranked champions are
left to hope that they are selected for one of the four at-large invitations
given to teams not qualifying for an automatic BCS bid.20
In addition to this competitive disparity, the non-BCS Conferences are
http://sports.espn.go.com/ncf/news/story?id=4311694 (last accessed Oct. 5, 2010).
15
Chris Rizo, Bowl Championship Series Could Face Multistate Action, LEGAL NEWS
LINE, http://www.legalnewsline.com/news/224840-bowl-championship-series-could-facemultistate-action (last accessed Oct. 5, 2010). This is not the first time that Attorney
General Shurtleff has rattled his sabre with respect to the BCS. See Joe Drape, B.C.S. To
Explore a More Inclusive System, N.Y. TIMES, Nov. 17, 2003, at D4 (noting that in 2003
Shurtleff threatened to “ask the antitrust committee of the National Association of
Attorneys General to ‘open an investigation to examine whether or not competition is
restrained and consumers are harmed under the current B.C.S. arrangement’”).
16
Frederic J. Frommer, Federal Government Weighing Action on BCS, ASSOCIATED
PRESS, Jan. 30, 2010, available at http://www.timesfreepress.com/news/
2010/jan/30/federal-government-weighing-action-bcs-football-ga/.
17
The Atlantic Coast (“ACC”), Big East, Big Ten, Big Twelve, Pacific Coast (“Pac-10”),
and Southeastern (“SEC”) Conferences are generally considered the “BCS Conferences.”
See Adam Kilgore, For Hokies, Some Heavy Lifting; Virginia Tech to Face Kansas With a
Struggling Conference on Its Back, WASH. POST, Jan. 3, 2008, at E01 (referring to those six
as the BCS Conferences).
18
The non-BCS Conferences include Conference USA (“C-USA”), as well as the MidAmerican, Mountain West, Sun Belt, and Western Athletic (“WAC”) Conferences. Is
there a true No. 1, WASH. POST, Aug. 30, 2006, at H08 (noting same). Rather than using
the BCS and non-BCS Conference classifications, the BCS instead prefers to distinguish
between Automatic Qualifying (“AQ”) and non-Automatic Qualifying (“non-AQ”)
conferences, depending on whether the conference is guaranteed an annual BCS bowl bid.
BCS Conferences, BCSFOOTBALL.ORG,
http://www.bcsfootball.org/news/story?id=4809755 (last accessed Oct. 5, 2010). This
Article will nevertheless use the more widely adopted BCS and non-BCS Conference
terminology.
19
BCS Selection Procedures, supra note 9.
20
Id.
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57
also disadvantaged financially, as the BCS pays each BCS Conference a
guaranteed payment of over $19 million per season for its participation in a
BCS bowl game.21 In comparison, a total of only $24 million was split
between the five non-BCS Conferences following the 2009–10 season,
despite the fact that two teams from non-BCS Conferences were among the
ten teams that participated in BCS bowl games.22 Critics allege that this
annual disparity in revenue enables the BCS Conferences to maintain
significant advantages with respect to facilities, coaching, and recruiting, all
of which serve to perpetuate their competitive advantage over the non-BCS
Conferences on the football field.23
Despite this inequity, skeptics question whether curing the ills of major
college football warrants governmental intervention, especially given the
many problems currently facing the nation.24 However, considering that the
BCS has been estimated to have an economic impact of over $1.2 billion
per year,25 and given that some consider the BCS to be “perhaps the most
economically and politically powerful cartel since the Sherman Act was
passed in 1890,”26 the legality of the BCS is a significant issue, and one that
increasingly appears headed for either a judicial or political resolution.
With the status of the BCS uncertain under federal antitrust law, a
number of academic legal analyses have addressed the issue over the
years,27 predominantly focusing on whether the BCS’s discrimination
21
Bowl Championship Series Five Year Summary of Revenue Distribution 2005-06
through 2009-10, supra note 10.
22
The BCS Is ..., BCSFOOTBALL.ORG, http://www.bcsfootball.org/news/ story?id=4809716
(last accessed Oct. 5, 2010).
23
See infra notes 169–171 and accompanying text.
24
See BCS Response to DOJ Letter, BCSFOOTBALL.ORG (Jan. 29, 2010), available at
http://www.bcsfootball.org/news/story?id=4870960 (quoting Bill Hancock, the Executive
Director of the Bowl Championship Series).
25
The BCS Is ..., supra note 22. Overall, college football is estimated to be a $2 billion per
year industry. Michael Ozanian, The Business Of College Football, FORBES (Aug. 13,
2008), available at http://www.forbes.com/2008/08/13/coach-football-ncaa-bizcz_mb_0813coachland.html.
26
McClelland, supra note 12, at 205 (quoting Gary R. Roberts, then-Director of the Sports
Law Program at Tulane Law School).
27
See, e.g., M. Todd Carroll, Note, No Penalty on the Play: Why the Bowl Championship
Series Stays In-Bounds of the Sherman Act, 61 WASH. & LEE L. REV. 1235 (2004); Jasen R.
Corns, Comment, Pigskin Paydirt: The Thriving of College Football’s Bowl Championship
Series in the Face of Antitrust Law, 39 TULSA L. REV. 167 (2003); Lafcadio Darling, Note,
The College Bowl Alliance and the Sherman Act, 21 HASTINGS COMM. & ENT. L.J. 433
(1999); Brett P. Fenasci, Comment, An Antitrust Analysis of College Football’s Bowl
Championship Series, 50 LOY. L. REV. 967 (2004); Mark Hales, The Antitrust Issues of
NCAA College Football Within the Bowl Championship Series, 10 SPORTS LAW. J. 97
(2003); Timothy Kober, Comment, Too Many Men on the Field: Why Congress Should
Punt on the Antitrust Debate Overshadowing Collegiate Football and the Bowl
58
2/7/2011 9:49 AM
against the non-BCS Conferences constitutes an unlawful group boycott.
Initially, the commentators were split with regards to the legality of the
system.28 Articles concluding that the BCS did not violate antitrust law
generally argued that the pro-competitive benefits of the BCS—most
specifically its creation of a national championship game—outweighed the
harm inflicted on the non-BCS Conferences under a rule of reason
analysis.29 In contrast, those arguing against the BCS disagreed with that
balancing, asserting that the creation of a championship game does not
warrant the discriminatory treatment of the non-BCS Conferences.30
However, following modifications to the BCS selection procedures in 2004,
which granted the non-BCS Conferences greater access to BCS bowl
games,31 subsequent academic analyses have overwhelmingly concluded
that the current system does not violate antitrust law.32
This Article diverges from the existing literature in two ways. First,
Championship Series, 15 SETON HALL J. SPORTS & ENT. L. 57 (2005); McClelland, supra
note 12; Moreland, supra note 11; Leslie Bauknight Nixon, Playoff or Bust: The Bowl
Championship Series Debate Hits Congress (Again), 21 ST. THOMAS L. REV. 365 (2009);
Christopher Pruitt, Debunking a Popular Antitrust Myth: The Single Entity Rule and Why
College Football’s Bowl Championship Series Does Not Violate the Sherman Antitrust Act,
11 TEX. REV. ENT. & SPORTS L. 125 (2009); C. Paul Rogers III, The Quest for Number One
in College Football: The Revised Bowl Championship Series, Antitrust, and the Winner
Take All Syndrome, 18 MARQ. SPORTS L. REV. 285 (2008); Jude D. Schmit, A Fresh Set of
Downs? Why Recent Modifications to the Bowl Championship Series Still Draw a Flag
Under the Sherman Act, 14 SPORTS LAW. J. 219 (2007); K. Todd Wallace, Elite
Domination of College Football: An Analysis of the Antitrust Implications of the Bowl
Alliance, 6 SPORTS LAW. J. 57 (1999); Jodi M. Warmbrod, Comment, Antitrust in Amateur
Athletics: Fourth and Long: Why Non-BCS Universities Should Punt Rather Than Go For
an Antitrust Challenge to the Bowl Championship Series, 57 OKLA. L. REV. 333 (2004).
See also Andrew Zimbalist, The BCS, Antitrust and Public Policy, ANTITRUST BULLETIN,
available at http://www.smith.edu/econ/workingpaper/ pdfs/Zimbalist1.pdf (last accessed
Oct. 8, 2010) (discussing the BCS from an economist’s perspective).
28
Among the articles determining that the BCS violated antitrust law were Corns, supra
note 27; Hales, supra note 27; McClelland, supra note 12; Wallace, supra note 27. See
also Roger I. Abrams, Sports Law Issues Just Over the Horizon, 3 VA. SPORTS & ENT. L.J.
49, 58 (2003) (stating that opponents of the BCS would “have a strong antitrust violation
claim,” despite not fully analyzing the issue). Meanwhile, among the articles to conclude
that the BCS did not run afoul of antitrust law were Carroll, supra note 27; Fenasci, supra
note 27; Kober; supra note 27; Warmbrod, supra note 27.
29
See generally Carroll, supra note 27; Fenasci, supra note 27; Kober; supra note 27;
Warmbrod, supra note 27.
30
See generally Corns, supra note 27; Hales, supra note 27; McClelland, supra note 12;
Wallace, supra note 27.
31
See generally BCS Chronology, BCSFOOTBALL.ORG,
32
See, e.g., Nixon, supra note 27; Pruitt, supra note 27; Rogers, supra note 27. But see
Schmit, supra note 27 (arguing that the modified BCS continues to violate antitrust law).
2/7/2011 9:49 AM
Issue 1
59
contrary to the most recent works, this Article argues that a plausible group
boycott case can still be asserted against the BCS despite the modifications
made to its selection procedures, because the BCS withholds the full
financial benefits of participation in BCS bowl games from non-BCS
Conference teams—a factor overlooked by the existing analyses. Second,
and perhaps more significantly, this Article argues that the existing
literature has generally overlooked other potential bases for asserting that
the BCS violates federal antitrust law. Specifically, prior analyses have
largely failed to consider potential price fixing or tying claims against the
BCS, the former of which provides an especially strong point of attack for
critics of the BCS.
Accordingly, although the outcome of an antitrust trial is typically
difficult to predict,33 this Article concludes that the BCS remains quite
susceptible to attack under federal antitrust law. Specifically, Part II begins
by providing the necessary factual context for an antitrust analysis of the
BCS, namely a review of the history of post-season college football bowl
games and the evolution of the BCS. Part III then presents a brief summary
of the relevant provisions of federal antitrust law. Part IV applies these
various antitrust theories to the BCS, concluding that the system remains
vulnerable to an antitrust challenge on several grounds. Finally, Part V
provides a brief recap of the Article’s main points and conclusion.
II. HISTORY OF THE COLLEGE FOOTBALL BOWL SYSTEM AND THE
BCS
A.The Evolution of the Bowl System
The National Collegiate Athletic Association (“NCAA”) is the
regulatory body for 22 different intercollegiate sports, including college
football.34 The NCAA divides its member institutions into several
divisions, with those universities participating at the highest levels of
athletic competition designated as Division I.35 In the case of college
33
See, e.g., Maurice E. Stucke, Does the Rule of Reason Violate the Rule of Law?, 42 U.C.
DAVIS L. REV. 1375, 1422–29 (2009) (discussing the unpredictability of antitrust trials
under the rule of reason standard).
34
McClelland, supra note 12, at 175. See also Matthew J. Mitten, Applying Antitrust Law
to NCAA Regulation of “Big Time” College Athletics: The Need to Shift From Nostalgic
19th and 20th Century Ideals of Amateurism to the Economic Realities of the 21st Century,
11 MARQ. SPORTS L. REV. 1, 23 (2000) (noting that the NCAA regulates major college
football).
35
Peter Kreher, Antitrust Theory, College Sports, and Interleague Rulemaking: A New
Critique of the NCAA’s Amateurism Rules, 6 VA. SPORTS & ENT. L.J. 51, 70 (2006);
Michael J. Nichols, Time for a Hail Mary? With Bleak Prospects of Being Aided by a
60
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football, Division I is further subdivided into two separate classifications,
Football Bowl Subdivision (“FBS”—formerly known as I-A) and Football
Championship Subdivision (“FCS”—formerly known as I-AA).36 The FBS
is widely considered the competitively stronger of the two Division I
football subdivisions.37
In addition to belonging to the NCAA, most universities also belong to
a conference of eight or more other colleges.38 These conferences
coordinate a number of athletic competitions between their members,39
culminating in the crowning of an annual conference champion in each of
the sports sponsored by the conference. The conferences are also
responsible for distributing the proceeds of various sources of conference
revenue, such as television agreements and bowl game participation
payments, to their member universities.40
Of all the sports officially sanctioned by the NCAA—including
football at the FCS, Division II, and Division III levels—FBS football is the
College Version of the NFL’s Rooney Rule, Should Minority College Football Coaches
Turn Their Attention to Title VII Litigation?, 8 VA. SPORTS & ENT. L.J. 147, 14950
(2008).
36
NCAA ACADEMIC AND MEMBERSHIP AFFAIRS STAFF, THE NATIONAL COLLEGIATE
ATHLETIC ASSOCIATION, 2009-2010 NCAA DIVISION I MANUAL § 20.1.1.2 (July 2009),
available at http://www.ncaapublications.com/productdownloads/D110.pdf.
Prior to 2006, FBS teams were referred to as Division I-A, while FCS teams were labeled
I-AA. See Rogers, supra note 27 at 286 n.5 (citing David Albright, NCAA Misses the Mark
in Division I-AA Name Change, ESPN.COM, Dec. 15, 2006,
http://sports.espn.go.com/ncf/columns/story?id=2697774).
37
Josh Martin, The Fairness Doctrine: The BCS of American Politics, 60 MERCER L. REV.
1393, 1394 n.4 (2008).
38
See Gregg L. Katz, Conflicting Fiduciary Duties Within Collegiate Athletic Conferences:
A Prescription for Leniency, 47 B.C. L. REV. 345, 348 (2006) (“Within the larger
framework of the NCAA, entities known as conferences provide further structure to
intercollegiate athletics. Conferences are associations of NCAA-member schools that
conduct competitions among their members and determine a conference champion in one
or more sports.”). Presently, 117 of the 120 FBS schools belong to a conference. See 2009
NCAA College Football Standings, ESPN.COM, http://espn.go.com/collegefootball/standings/ (last accessed Jan. 12, 2010). Only the University of Notre Dame
(“Notre Dame”), the United States Naval Academy (“Navy”), and the United States
Military Academy (“Army”) remain independent of any conference affiliation. Id. See
also Leslie Bauknight Nixon, Playoff or Bust: The Bowl Championship Series Debate Hits
Congress (Again), 21 ST. THOMAS L. REV. 365, 369–70 (2009) (noting same).
39
See Nathaniel Grow, A Proper Analysis of the National Football League Under Section
One of the Sherman Act, 9 TEX. REV. ENT. & SPORTS L. 281, 298 n.150 (2008) (“a sizeable
portion of most college football teams’ schedules are set by the team’s respective
conference”).
40
See Amy Christian McCormick & Robert A. McCormick, The Emperor's New Clothes:
Lifting the NCAA’s Veil of Amateurism, 45 SAN DIEGO L. REV. 495, 51113 (2008)
(discussing sources and distribution of conference revenues).
Issue 1
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61
only one that does not culminate its season with a championship playoff
tournament.41 Instead, FBS has traditionally delegated the duty of selecting
its national champion to various human polls, in which groups of journalists
and football coaches rank the top 25 teams in the nation, with the top ranked
team at season’s end proclaimed the national champion.42
The FBS has maintained this unique system in deference to its longstanding tradition of post-season bowl games.43 The college football bowl
game tradition dates back to 1894, when the University of Chicago hosted
Notre Dame in a post-season exhibition game.44 Since then a number of
bowl games have come and gone,45 with a total of 35 games featuring 70
different teams scheduled to be played between mid-December 2010 and
early-January 2011.46 Each of these bowl games is a privately owned
entity, typically formed to increase tourism in the host city.47 Every bowl
game is certified by—but ultimately independent from—the NCAA,48 and
seeks to draw the best available teams to play in its game, primarily by
offering to pay schools an appearance fee ranging from $750,000 to over
$19 million.49 Not only do universities thus benefit from the bowl system
through these guaranteed payments, but they also receive significant
exposure insofar as practically every bowl game is nationally televised.50
Despite these benefits, the traditional bowl system was not without its
faults. Most notably, prior to the formation of the BCS, the bowl system
was rarely able to orchestrate a post-season game between the two top
ranked teams in the nation. Indeed, between 1968 and 1997, only nine out
of the thirty seasons ended with the first and second ranked teams meeting
in a post-season bowl game.51 This unsatisfying outcome was the result of a
series of contractual relationships formed between individual bowl games
and conferences.52 These contractual agreements allowed a bowl game to
guarantee itself a quality opponent from a particular conference, and gave
41
See McClelland, supra note 12, at 175 (noting that the NCAA offers eighty-seven
championship playoffs in twenty-two sports, but not in FBS football).
42
Carroll, supra note 27, at 1244.
43
Id. at 1245.
44
Warmbrod, supra note 27, at 336.
45
Hales, supra note 27, at 101.
46
See Richard Sandomir, It’s New York. It’s the Stadium. It’s the Pinstripe Bowl., N.Y.
TIMES, Mar. 9, 2010, at B15.
47
Hales, supra note 27, at 101 n.23.
48
Corns, supra note 27, at 178; Wallace, supra note 27, at 64.
49
50
See id. at 1246 (noting that “increased exposure for a school and its football program” is
one of the incentives to participate in a bowl game).
51
Id. at 1251.
52
See, e.g., Kober, supra note 27, at 60.
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the conferences long-term agreements that ensured quality allotments of
bowl game opportunities for their member universities. However, because
these agreements often required the two top ranked teams to play in
different, predetermined bowl games, a season ending showdown between
the number one and two teams could only occur by happenstance. As a
result, nearly one-quarter of the seasons from 1954 through 1997 ended
with a “split” national championship, in which the competing polls ranked
different universities number one in the country.53
In order to address this shortcoming of the traditional bowl system, the
College Bowl Coalition (“Bowl Coalition”) was formed in 1992.54 The
Bowl Coalition was created through a set of agreements between five major
conferences—the ACC, Big East, Big Eight, SEC, and Southwestern
Conferences—independent Notre Dame, and four marquee bowl games—
the Orange, Sugar, Fiesta, and Cotton Bowls—with the goal of pairing the
two top ranked teams in a post-season bowl game every year.55 However,
because the Bowl Coalition maintained traditional ties between certain
conferences and bowl games, it failed to consistently create a national
championship game between the two top ranked teams. For example, under
the Bowl Coalition framework, the champion of the SEC was committed to
play in the Sugar Bowl, while the champion of the Big Eight was
committed to the Orange Bowl.56 Thus, in any season where the champions
of the SEC and Big Eight were ranked first and second, a national
championship game would remain elusive. Moreover, because neither the
Big Ten nor Pac-10 belonged to the Bowl Coalition, no championship game
was possible in years where the champion of one of those conferences was
among the nation’s two top ranked teams.57
In light of the limitations of the Bowl Coalition, the system was
modified in 1994 and renamed the Bowl Alliance.58 Under the Bowl
Alliance, the champions of the participating conferences were no longer
obligated to play in a specific bowl game. Instead, the champions of the
ACC, Big East, Big Twelve (a combination of the former Big Eight and
Southwestern Conferences), and SEC were guaranteed to play in one of the
Orange, Sugar, or Fiesta Bowls,59 with the two remaining slots available to
any team in the country that had won at least eight games.60 As a result, the
53
54
55
56
57
58
59
60
McClelland, supra note 12, at 17778.
Darling, supra note 27, at 437.
Id. at 438.
Schmit, supra note 27, at 228.
Id. at 229.
Wallace, supra note 27, at 62.
Darling, supra note 27, at 439.
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63
Bowl Alliance was able to arrange a championship game anytime the two
top ranked teams in the nation belonged to one of the four participating
conferences.
However, because the champions of both the Big Ten and Pac-10
remained committed to playing in the Rose Bowl,61 the Bowl Alliance was
also unable to guarantee a national championship game whenever the
champion of one of those conferences was ranked first or second in the
country. Just such a scenario arose during the 1997 season, when the
University of Nebraska (“Nebraska”) and University of Michigan
(“Michigan”) were ranked first and second in the polls following
undefeated regular seasons. Michigan, as the champion of the Big 10, was
committed to play the Pac-10 champion in the Rose Bowl, while Nebraska
headed to the Orange Bowl.62 After both Michigan and Nebraska won their
bowl games, the coaches’ poll ranked Nebraska number one, while the
Associated Press’s (“AP”) poll placed Michigan first, resulting in yet
another split national championship.63
B.The Formation and Development of the Bowl Championship Series
The failure of both the Bowl Coalition and Bowl Alliance to reliably
create number one versus number two championship bowl games motivated
the formation of the BCS in 1998.64 In particular, the BCS improved upon
the Bowl Alliance by adding the Big Ten, Pac-10, and Rose Bowl to the
existing agreements between the Bowl Alliance’s participating conferences
and bowl games.65 Like the Bowl Alliance, the BCS did not tie together
particular conferences and bowls, but rather guaranteed the champions of its
six member conferences a bid to one of the four BCS-affiliated bowls, thus
enabling the BCS to guarantee a championship game between the first and
second ranked teams every year.66
The initial BCS selection procedures were based on teams’ rankings in
the final BCS Standings, which were compiled by combining four elements:
(i) the pre-existing AP and coaches’ polls, (ii) the average of three separate
computer ranking systems (the Sagarin, Seattle Times and New York Times
ratings), (iii) teams’ win-loss records, and (iv) teams’ strength-of-schedule,
based on both the records of a team’s opponents as well as its opponents’
61
62
63
64
65
66
Warmbrod, supra note 27, at 346.
Corns, supra note 27, at 173.
Id. at 17374.
Moreland, supra note 11, at 724.
Fenasci, supra note 27, at 970.
Schmit, supra note 27, at 230–31.
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opponents.67 The teams ranked first and second in the final BCS Standings
were selected to play in the national championship game, which rotated
annually among the four BCS bowls.68 Next, the remaining champions of
the six BCS Conferences were guaranteed a spot in one of the other BCS
bowl games. Teams from non-BCS Conferences were only guaranteed an
invitation to one of the BCS bowls if they ranked sixth or better in the BCS
Standings,69 while Notre Dame would qualify if it either won at least nine
games or finished at least tenth in the final BCS Standings.70 If any of the
eight potential BCS bowl spots remained unclaimed after the automatic
selections were made, the BCS bowls could pick the remaining participants
from a pool of “at-large” teams, drawn from any university that won at least
nine games in the regular season and finished twelfth or higher in the final
BCS Standings.71 However, no more than two schools from a single
conference were eligible to appear in BCS games in a single season.72
In addition to securing their champions bids to the most prestigious
bowl games, the BCS Conferences also realized significant financial
benefits from the new agreement. At the time of its formation, the BCS
signed an initial television agreement with ABC Sports worth an estimated
$730 million over eight years for the exclusive rights to broadcast the four
BCS bowl games,73 approximately two and a half times the previous annual
rate paid for the broadcast rights to the same four games.74 The proceeds of
this broadcast agreement were primarily divided among the six BCS
Conferences. For example, during the 2001–02 season, the four BCS bowl
games generated nearly $100 million in revenue, of which over $94 million
was divided among the six BCS Conferences.75 Although the four BCS
bowl games made up only a small fraction of the twenty-five total bowl
games played that season, the BCS participants nevertheless received 93%
of the total bowl revenues.76
67
BCS Chronology, supra note 31. The formula for the BCS Standings has since been
frequently modified, and presently includes only a mix of human and computer rankings.
See BCS Selection Procedures, supra note 9.
68
Fenasci, supra note 27, at 970–71.
69
Id. at 971.
70
Pruitt, supra note 27, at 141.
71
72
See BCS Selection Procedures, supra note 9 (“No more than two teams from a
conference may be selected, regardless of whether they are automatic qualifiers or at-large
selections, unless two non-champions from the same conference are ranked No. 1 and No.
2 in the final BCS Standings.”).
73
74
Zimbalist, supra note 27, at 7.
75
76
Id. at 177.
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65
Despite the promise of the BCS to provide a national championship
game each year between the nation’s top two teams, the BCS has not been
without controversy. For example, during the 2000–01 season, the
University of Oklahoma (“Oklahoma”) and Florida State University
(“Florida State”) were the two top ranked teams in the final BCS Standings,
and thus selected to play for the national championship, despite the fact that
Florida State had lost earlier in the year to the University of Miami
(“Miami”), the third ranked team in the BCS Standings, causing many fans
to believe that Miami should have been selected for the title game over
Florida State.77 Similarly, during the 2001–02 season, Miami and Nebraska
faced each other for the national championship, even though Nebraska had
lost to the University of Colorado (“Colorado”) in the regular season finale,
resulting in Colorado being ranked ahead of Nebraska in both the AP and
coaches’ polls.78 In 2003–04, the University of Southern California
(“USC”) was ranked first in both the AP and coaches’ polls, yet finished
third in the final BCS Standings.79 As a result, USC was not selected to
play in the Sugar Bowl (that year’s BCS championship game), and
ultimately split the national title with Sugar Bowl champion Louisiana State
University—the exact outcome the BCS was created to avoid.80 The
controversy continued the next year when Auburn University (“Auburn”)
failed to be selected for the 2004–05 championship game, despite finishing
the season undefeated.81 Most recently, the selection of participants for the
2009 BCS National Championship Game generated controversy after five
different schools finished the regular season undefeated;82 ultimately, the
University of Alabama (“Alabama”) and the University of Texas were
selected to compete for the title. In response to these controversies, the
BCS has continually tweaked the formula for calculating the BCS
Standings.83
While the selection of teams for the BCS National Championship
Game has generally drawn the most criticism, the selections for the other
77
Hales, supra note 27, at 123.
Id. at 124.
79
Liz Clarke, Football Title Game Omits No. 1; Computer Formula Disagrees With Both
Major College Polls, WASH. POST, Dec. 8, 2003, at A1.
80
McClelland, supra note 12, at 20304.
81
Rogers, supra note 27, at 291.
82
See Fred Bowen, With Perfect Records, Which Team is Best?, WASH. POST, Dec. 3,
2009, at C09 (discussing controversy).
83
See BCS Chronology, supra note 31 (documenting changes). Presently, the BCS
Standings are calculated by equally weighting three components: “the USA Today Coaches
Poll, the Harris Interactive College Football Poll and an average of six computer rankings
(Anderson & Hester, Richard Billingsley, Colley Matrix, Kenneth Massey, Jeff Sagarin
and Peter Wolfe).” Bowl Championship Series FAQ, supra note 8.
78
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BCS bowl games have also not gone without controversy. Specifically,
during the initial years of the BCS, no team from a non-BCS Conference
was selected to participate in a BCS bowl game. For example, Tulane
University (“Tulane”) finished the 1998–99 season undefeated and was
ranked eleventh in the nation, but did not receive a bid to any of the BCS
bowls.84 Similarly, Marshall University went undefeated the next season—
one of only two teams in the country to accomplish the feat—but was
forced to play in the Motor City Bowl after being passed over by the BCS.85
In 2001, Brigham Young University (“BYU”) entered the final game of the
regular season undefeated and ranked twelfth in the BCS Standings, only to
be informed by BCS officials that the team would not be considered for an
at-large invitation to a BCS bowl.86 Two years later, Boise State University
(“Boise State”), Miami University (Ohio), and Texas Christian University
(“TCU”) were all similarly denied invitations to BCS bowl games despite
outstanding regular season performances.87
Following this series of snubs, the non-BCS Conferences decided to
work together to obtain greater access to the BCS bowl games. Led by
Tulane President Scott Cowen, the non-BCS Conferences formed the
Presidential Coalition for Athletics Reform (“Presidential Coalition”),
seeking to compel the BCS to modify its selection procedures.88 The
Presidential Coalition ultimately persuaded Congress to become involved,
with both the House and Senate Judiciary Committees holding hearings in
2003 regarding the legality of the BCS under antitrust law.89 Although both
Committees generally appeared to side with the non-BCS Conferences, it
became apparent that Congress would only step in if other avenues for
reform failed.90
Despite the lack of Congressional action, the BCS nevertheless
succumbed to the Presidential Coalition’s political pressure,91 and
implemented a series of reforms to the BCS structure in 2004 that became
effective for the 2006 season.92 Perhaps most significantly, the BCS
Conferences formally included the non-BCS Conferences as parties to the
various BCS agreements,93 granting the non-BCS Conferences a single
84
85
86
87
88
89
90
91
92
93
Rogers, supra note 27, at 290-91.
Id. at 234.
Id.
Id. at 123940.
See BCS Chronology, supra note 31.
See id. (noting the “landmark” agreement including “the chief executive officers
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67
voting position on the eight member BCS Presidential Oversight
Committee.94 In addition to inviting the non-BCS Conferences to
participate in the governance of the BCS, the 2004 revisions also included a
number of modifications to the BCS’s operating procedures. First, the BCS
created a new, fifth BCS bowl game to serve as the BCS National
Championship Game.95 This doubled the number of BCS at-large slots
from two to four, and thus increased the chances that a non-BCS school
would be selected for a BCS bowl game. Second, the BCS made it easier
for schools from non-BCS Conferences to earn guaranteed invitations to
BCS bowls, with non-BCS teams no longer needing to finish in the top six
of the final BCS Standings to guarantee a BCS bowl invitation, as under the
original rules. Rather, the new procedures specified that the highest ranked
champion of a non-BCS Conference would receive a guaranteed bid so long
as it either: (i) ranked in the top twelve of the final BCS Standings, or (ii)
ranked in the top sixteen of the final standings and ahead of at least one
champion from a BCS Conference.96 Third, the BCS agreed to reevaluate
which conferences would be allotted guaranteed, automatic bids to BCS
bowls, implementing new standards to evaluate all eleven FBS conferences
every four years based on their on-field performance.97 Under the new
procedures, a minimum of five and maximum of seven conferences will
qualify for automatic BCS invitations.98 Finally, the existing BCS members
agreed to share a greater percentage of BCS revenues with the non-BCS
Conferences.99
The revised procedures quickly resulted in greater access to BCS bowls
for non-BCS Conference teams. In 2004–05, the University of Utah
(“Utah”) from the Mountain West Conference was selected to play in the
Fiesta Bowl, while Boise State was similarly selected for the Fiesta Bowl in
2006–07.100 In 2007–08 the University of Hawaii from the WAC was
picked to play in the Sugar Bowl, as was Utah in 2008–09.101 Most
recently, Boise State and TCU faced each other in the Fiesta Bowl during
representing all 11 Division I-A conferences and Notre Dame”).
94
See Hearing on the Bowl Championship Series: Money and Other Issues of Fairness for
Publicly Financed Universities, House Comm. On Energy and Commerce, 111th Cong. 3
(2009) (statement of Gene Bleymaier, Director of Athletics, Boise State University)
(explaining the current voting system) [hereinafter Bleymaier Congressional Statement].
95
Pruitt, supra note 27, at 141.
96
BCS Chronology, supra note 31.
97
Id.
98
Id.
99
Id.
100
BCS, Alliance & Coalition Games, Year-by-Year, BCSFOOTBALL.ORG,
101
Id.
68
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the 2009–10 season.102
Despite this increased access, critics of the BCS still argue that the
system treats teams from the non-BCS Conferences unfairly. These
criticisms are two-fold. First, although non-BCS teams have received
greater access to BCS bowl games in recent years, no non-BCS team has
been selected to play in the national championship game. For example,
although Utah was the only university to finish the 2008–09 regular season
undefeated,103 the University of Florida and Oklahoma were instead
selected to play for the national championship.104 Utah had to settle for
handily defeating Alabama—a team that had been ranked first for much of
the season—in the Sugar Bowl.105 Similarly, both Boise State and TCU
were passed over for a berth in the 2009–10 national championship game
despite both finishing the regular season undefeated.106
Second, the current BCS system can also be criticized insofar as it
unevenly distributes revenue among the participating conferences.
Specifically, even when a non-BCS team qualifies for a BCS bowl game, its
conference receives a significantly smaller share of BCS revenues than do
the six BCS Conferences. For example, following the 2009–10 season,
each BCS Conference received a payout of at least $19.7 million, with the
Big Ten and SEC each receiving $24.2 million by virtue of having had two
teams selected to participate in BCS bowls.107 In contrast, even though
non-BCS schools Boise State and TCU both qualified to play in BCS bowls,
the non-BCS Conferences received a total of only $24 million to be split
between five different conferences, a disparity that the commissioner of the
non-BCS Mountain West Conference previously declared to be “grossly
inequitable.”108
As a result of these criticisms, the BCS continues to be the subject of
significant scrutiny. As noted above, in the last two years the Senate
Judiciary Committee has held hearings regarding the BCS,109 while Utah’s
Attorney General and the U.S. Department of Justice have both
acknowledged that they are exploring the possibility of litigation or antitrust
102
Id.
See 2008 College Football Standings, COLLEGEFOOTBALLPOLL.COM,
http://www.collegefootballpoll.com/2008_archive_standings.html (last accessed Oct. 8,
2010).
104
BCS, Alliance & Coalition Games, Year-by-Year, supra note 100.
105
Id.
106
Id.
107
Bowl Championship Series Five Year Summary of Revenue Distribution 2005–06
through 2009–10, supra note 10.
108
Id.
109
Hatch Calls for BCS Investigation, supra note 14.
103
2/7/2011 9:49 AM
Issue 1
69
investigations against the BCS.110 Therefore, the legality of the BCS under
antitrust law remains a hotly contested issue, one that may be headed
towards a judicial resolution.
III. A BRIEF OVERVIEW OF THE RELEVANT ANTITRUST LAW
PROVISIONS
Federal antitrust regulation began with the enactment of the Sherman
Antitrust Act of 1890,111 the statute that provides the most likely basis for
an antitrust attack against the BCS. The Sherman Act contains two primary
provisions combating anticompetitive conduct: Sections One and Two.
Section One of the Sherman Act provides that “[e]very contract,
combination . . . or conspiracy, in restraint of trade or commerce . . . is
declared to be illegal.”112 Because a single party cannot contract, combine,
or conspire with itself, this prohibition has been interpreted to require an
agreement between multiple entities.113 Moreover, because a literal reading
of the provision—condemning “every” contract, combination, or conspiracy
in restraint of trade—would outlaw practically all contracts, courts have
subsequently limited the applicability of Section One.114 Specifically,
courts have held that in order for a plaintiff to assert a viable claim under
Section One, three elements must be established: (i) that an agreement was
entered into, (ii) that the agreement unreasonably restrains trade, and (iii)
that the agreement affects interstate commerce.115 In addition to these three
requisite elements, courts increasingly also expect a plaintiff to demonstrate
how the challenged restraint harms consumer welfare.116
110
Rizo, supra note 15; Frommer, supra note 16.
15 U.S.C. §§17 (2006). See also Rogers, supra note 27, at 292 (noting that federal
antitrust law was “first enacted in 1890”).
112
Sherman Antitrust Act, 15 U.S.C. § 1 (2006).
113
See, e.g., Christopher R. Leslie, Unilaterally Imposed Tying Arrangements and
Antitrust's Concerted Action Requirement, 60 OHIO ST. L.J. 1773, 1776 (1999).
114
Gabriel A. Feldman, The Misuse of the Less Restrictive Alternative Inquiry in Rule of
Reason Analysis, 58 AM. U. L. REV. 561, 570 (2009).
115
See, e.g., Carroll, supra note 27, at 1258; Marc Edelman, Are Commissioner
Suspensions Really Any Different From Illegal Group Boycotts? Analyzing Whether the
NFL Personal Conduct Policy Illegally Restrains Trade, 58 CATH. U. L. REV. 631, 640
(2009).
116
See Brown Shoe Co. v. United States, 370 U.S. 294, 344 (1962) (“it is competition, not
competitors which the [Sherman] Act protects”). See also Douglas H. Ginsburg, Essays in
Honor of Judge Robert H. Bork: I. Competition Law and the Free Market: The Antitrust
Paradox: A Policy at War with Itself: Judge Bork, Consumer Welfare, and Antitrust Law,
31 HARV. J. L. & PUB. POL’Y 449, 451 (2008) (finding that the consumer welfare model of
antitrust law had become conventional wisdom in the federal courts by 1977); Rogers,
111
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Should a claim be asserted against the BCS under Section One, neither
the first nor third requisite elements are likely to be contested, as the BCS
readily admits it was formed through a series of contractual agreements,117
contracts which are clearly interstate in nature.118 With respect to the
second element, courts have identified various categories of agreements that
may unreasonably restrain trade. Of these, the scholarship to date
considering the BCS has predominantly focused on one form of restraint,
the group boycott, based on the BCS’s perceived favoritism of the BCS
Conferences at the expense of the non-BCS Conferences.119
As the Supreme Court has explained, a group boycott claim typically
alleges that competitors have conspired to cut off a rival’s “access to a
supply, facility, or market necessary to enable the boycotted firm to
compete.”120 Such a boycott will generally be found unreasonable, and thus
unlawful, when it is “not justified by plausible arguments that [it was]
intended to enhance overall efficiency and make markets more
competitive.”121
Although group boycotts typically arise when multiple entities
collectively refuse to deal at all with the aggrieved party, a complete
boycott is not required to state a valid claim. For example, in the 1959 case
of Klor’s, Inc. v. Broadway-Hale Stores, Inc.,122 the Supreme Court
considered a group boycott claim brought by a San Francisco department
supra note 27, at 295 (“antitrust law has evolved in the last three decades into what is a
largely consumer welfare driven model. Under this model, to prove an antitrust offense,
one must prove consumer harm rather than simply proving harm to a competitor”). But see
C. Paul Rogers III, Symposium: Evolution and Change in Antitrust Law: Foreword:
Consumer Welfare and Group Boycott Law, 62 S.M.U. L. REV. 665 (2009) (discussing the
uneven way in which the consumer welfare requirement is applied in group boycott cases).
117
Bowl Championship Series FAQ, supra note 8. Of note, the BCS includes agreements
among competing conferences and bowl games, making the system both a horizontal and
vertical restraint. Carroll, supra note 27, at 126465. One commentator has recently
argued that the BCS constitutes a single entity under antitrust law, and is thus immune from
a Section One claim. See Pruitt, supra note 27. This claim was based largely on the
Seventh Circuit Court of Appeal’s opinion in American Needle, Inc. v. National Football
League, 538 F.3d 736 (7th Cir. 2008), a decision recently overruled by a unanimous
Supreme Court. See Am. Needle, Inc. v. Nat’l Football League, 130 S. Ct. 2201 (2010).
Following the Supreme Court’s rejection of the single entity argument by the National
Football League (“NFL”), courts are unlikely to grant the BCS single entity status.
118
See, e.g., Carroll, supra note 27, at 1259 (noting that the effect on interstate commerce
factor is not at issue in an antitrust analysis of the BCS).
119
See, e.g., Rogers, supra note 27, at 294 (“The most likely substantive § 1 violation
applicable to the BCS is an unlawful boycott or concerted refusal to deal.”).
120
Nw. Wholesale Stationers, Inc. v. Pac. Stationary & Printing Co., 472 U.S. 284, 294
(1985).
121
Id.
122
359 U.S. 207 (1959).
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71
store alleging that a competing store had convinced a number of name
brand appliance manufacturers to “sell to [plaintiff] only at discriminatory
prices and highly unfavorable terms,” if at all.123 The Court held that the
agreed upon refusal to deal with the plaintiff “at the same prices and
conditions made available to [its competitor],” “plainly” alleged a
boycott.124 Thus, a showing that the plaintiff was subjected to disparate
commercial treatment, even if not rising to the level of an all-out refusal to
deal, is sufficient for asserting a group boycott claim.125
While a potential group boycott claim has received the most attention
to date in antitrust analyses of the BCS, the BCS is also susceptible to
different claims under Section One. Because the BCS was formed through
a series of agreements between various football conferences and bowl
games, it is vulnerable to challenge as an agreement not to compete among
competitors. Specifically, as will be discussed below,126 the BCS is
arguably guilty of illegal price fixing by collectively establishing the
amounts to be paid to conferences for their participation in BCS bowl
games, and also by eliminating any competition between certain BCS bowls
for the sale of their broadcast rights to television networks.127 Generally
speaking, “antitrust law condemns [agreements] in which competitors set
prices collectively rather than letting competition determine price and
output.”128 Indeed, the Supreme Court has declared that horizontal price
fixing agreements—i.e., price fixing agreements between competitors—are
“the paradigm of an unreasonable restraint of trade” under Section One of
the Sherman Act.129
Another potential antitrust claim against the BCS is that it constitutes
an impermissible tying agreement insofar as the BCS collectively markets
four of the five BCS bowl games, including the national championship
123
Id. at 209.
Id. at 21213.
125
See Jonathan M. Joseph, Hospital Joint Ventures: Charting a Safe Course Through a
Sea of Antitrust Regulations, 13 AM. J. L. AND MED. 621, 631 (1988) (finding that some
courts have considered differences in reimbursements by health insurance companies to
preferred versus non-preferred providers to be “an illegal refusal to deal under Section 1 of
the Sherman Act and therefore find this form of differential reimbursement a restraint of
trade”). See also A. Douglas Melamed, Exclusionary Conduct Under the Antitrust Laws:
Balancing, Sacrifice, and Refusals to Deal, 20 BERKELEY TECH. L.J. 1247, 1248 (2005)
(noting that conduct that “weakens . . . or excludes” rivals is anticompetitive).
126
See infra Part IV.B.
127
See Zimbalist, supra note 27, at 38.
128
Mark A. Lemley & Christopher R. Leslie, Categorical Analysis in Antitrust
Jurisprudence, 93 IOWA L. REV. 1207, 1226 (2008).
129
Nat’l Collegiate Athletic Ass’n. v. Bd. of Regents of the Univ. of Okla., 468 U.S. 85,
100 (1984).
124
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game, as a single package to television networks.130 Tying agreements
violate Section One when four elements are present: (i) two or more
separate products are grouped together, (ii) the seller conditions the sale of
one product on the sale of the other product, (iii) the seller has sufficient
economic power to force purchasers to buy both tied products, and (iv) the
seller actually coerces the buyer to purchase both tied products.131 With
respect to the final element—actual coercion—courts typically require proof
that the buyer was an “unwilling purchaser of the allegedly tied
product[].”132 Thus, to prove a tying claim a plaintiff must show that it was
forced to buy a product it did not want in order to purchase the desired
product. Simply having to buy a product that one “does not ‘want as
much’” as the tied product is generally not enough.133
In Section One cases, courts will typically consider the characterization
of the allegedly anticompetitive conduct at issue when deciding which
standard of review to apply. For instance, some categories of restraints—
including horizontal price fixing—have been found to “always or almost
always . . . restrict competition and decrease output” and thus are usually
considered per se illegal.134 Conversely, because courts have determined
that other categories of restraints—including some tying agreements—may
at times promote competition, the legality of these activities is judged under
the more flexible rule of reason.135
The rule of reason—first endorsed by the Supreme Court in Justice
Brandeis’ landmark 1918 decision in Chicago Board of Trade136—generally
involves a three-step process. First, the court will require the plaintiff to
prove that the challenged restraint has an adverse effect on competition in a
relevant market.137 Second, should the plaintiff succeed, the burden shifts
to the defendant to demonstrate that the restraint possesses procompetitive
benefits.138 Finally, if the defendant successfully establishes that that the
130
Specifically, the BCS collectively sells the broadcast rights for the Fiesta, Orange and
Sugar Bowls, and the BCS National Championship Game. ESPN, BCS Agree to Four-year
Deal for Television, Radio, Digital Rights, ESPN.COM,
http://sports.espn.go.com/ncf/news/story?id=3710477 (Nov. 19, 2008). Meanwhile, the
Rose Bowl maintains its own broadcasting agreement with ABC. Id.
131
Leslie, supra note 113, at 185051. See also Feldman, supra note 114, at 57778
(discussing tying agreements generally).
132
Trans Sport, Inc. v. Starter Sportswear, Inc., 964 F.2d 186, 192 (2d Cir. 1992).
133
Six W. Retail Acquisition, Inc. v. Sony Theatre Mgmt. Corp., 2004 U.S. Dist. Lexis
5411, at *22 (S.D.N.Y. March 30, 2004).
134
Broad. Music, Inc., v. Columbia Broad. Sys., Inc., 441 U.S. 1, 1920 (1979).
135
See Feldman, supra note 114, at 578 (noting same).
136
Bd. of Trade of Chi. v. United States, 246 U.S. 231 (1918).
137
See, e.g., Edelman, supra note 115, at 647.
138
Carroll, supra note 27, at 126061.
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73
restraint has significant redeeming competitive qualities, the court will
finally consider whether the asserted procompetitive benefits could be
achieved through less restrictive means.139
Although the BCS is susceptible to attack as a horizontal price fixing
scheme—a category of restraint traditionally condemned as per se illegal—
most commentators have nevertheless concluded that any antitrust claim
against the BCS would likely be judged under the rule of reason standard.140
This consensus has been reached in view of the Supreme Court’s 1984
opinion in National Collegiate Athletic Association v. Board of Regents of
the University of Oklahoma (“NCAA”).141 In NCAA, the Court considered
an antitrust challenge brought by Oklahoma and the University of Georgia,
contesting an NCAA regulation limiting any single university to four
nationally televised football games—and six television appearances in
total—during a two-year period.142 The regulations also established
“recommended fees” for the television networks to pay to participating
universities for national and regional broadcasts.143 The Supreme Court
categorized these restrictions as a horizontal limitation on output and
horizontal price fixing, respectively; restraints typically considered per se
illegal.144 Nevertheless, the Court elected not to apply the per se rule,
concluding that a rule of reason analysis was necessary in light of college
football being “an industry in which horizontal restraints on competition are
essential if the product is to be available at all.”145 Therefore, although a
prospective plaintiff could attempt to distinguish the BCS from the rule
established in NCAA in order to receive per se treatment, a court hearing a
Section One challenge to the BCS would likely decide the case under the
rule of reason.146
139
See Feldman, supra note 114, at 583 (noting that the standard and burden of proof for
the less restrictive means factor varies from circuit to circuit).
140
See, e.g., Carroll, supra note 27, at 1270; Darling, supra note 27, at 459; Kober; supra
note 27, at 6667; McClelland, supra note, 12 at 206; Moreland, supra note 11, at 72829;
Wallace, supra note 27, at 75; Warmbrod, supra note 27, at 370.
141
468 U.S. 85 (1984). The NCAA case is discussed in greater detail below. See infra
notes 263-267 and accompanying text.
142
NCAA, 468 U.S. at 94.
143
Id. at 93, 93 n.10.
144
Id. at 99100.
145
Id. at 101. The Supreme Court recently reaffirmed this rule in American Needle, a case
involving the antitrust status of professional football. See Am. Needle, 130 S. Ct. at 2214
n.6.
146
For example, one commentator has suggested that NCAA may not be applicable to the
BCS insofar as the latter organization is a more explicitly commercial enterprise than the
not-for-profit NCAA. See Rogers, supra note 27, at 294. However, given that the
Supreme Court reaffirmed the NCAA rule in American Needle, a case involving the forprofit National Football League, this will be a hard argument for a BCS opponent to win.
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In addition to potential liability under Section One, the BCS is
vulnerable to attack under Section Two of the Sherman Act as well.147
Whereas Section One prohibits agreements in restraint of trade between
multiple parties, Section Two focuses on monopolization of an industry,
typically by a single firm.148 In order to establish a Section Two
monopolization claim, plaintiffs generally must prove two elements: “(1)
the possession of monopoly power in the relevant market and (2) the willful
acquisition or maintenance of that power as distinguished from growth or
development as a consequence of a superior product, business acumen, or
historic accident.”149 Thus, a plaintiff challenging the BCS under Section
Two would have to establish that either the BCS National Championship
Game itself, or all five of the BCS bowl games collectively, constitute a
relevant market, and that the BCS has excluded “non-BCS schools from a
meaningful opportunity to compete” in that market.150
In asserting that the BCS National Championship Game (or other BCS
bowl games) constitutes a relevant market, a plaintiff would likely draw
upon the Supreme Court’s 1959 decision in International Boxing v. United
States,151 in which the Court held that championship boxing matches
comprise a separate and distinct relevant market from non-championship
fights for antitrust purposes, due to the significant difference in financial
payouts given to the boxers.152 Along these same lines, a plaintiff could not
only argue that the BCS National Championship Game comprises a distinct
relevant market, but also that the entire BCS itself constitutes a separate
relevant market insofar as an appearance in a BCS bowl game results in a
significantly higher payment than does an appearance in any of the other,
less prestigious bowl games.153
Ultimately, however, a precise assessment of whether the BCS
constitutes a separate relevant market would likely require significant
economic analysis,154 analysis beyond the scope of this article. Moreover,
because Section Two claims are generally more difficult to prove than
147
See Zimbalist, supra note 27, at 3738.
149
United States v. Grinnell Corp., 384 U.S. 563, 570–71 (1966).
150
151
Int’l Boxing Club of N.Y., Inc. v. United States, 358 U.S. 242 (1959).
152
Id. at 25051.
153
See Carroll, supra note 27, at 1246.
154
See, e.g., E. THOMAS SULLIVAN AND JEFFREY L. HARRISON, UNDERSTANDING
ANTITRUST AND ITS ECONOMIC IMPLICATIONS § 2.06[A][2] (5th ed. 2009) (discussing the
relevant economic equations, including cross-elasticity of demand calculations, necessary
to identify a relevant market). See also Darling, supra note 27, at 445 (noting that
calculating market power “involves an intricate and thorough assessment of what the
competitive market encompasses”).
148
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75
claims under Section One,155 an antitrust case against the BCS is unlikely to
hinge upon a Section Two claim given the various Section One allegations
available to a prospective plaintiff.156 Therefore, the remainder of this
article focuses on an assessment of the BCS’s potential liability under
Section One of the Sherman Act.
IV. ASSESSING THE STRENGTH OF THE POTENTIAL ANTITRUST
CLAIMS AGAINST THE BCS
Any number of parties could potentially seek to challenge the BCS
under federal antitrust law, including the U.S. Department of Justice, a state
attorney general, or an affected conference, university or television network.
Meanwhile, because the BCS is not itself a legal entity, but instead is
simply a scheduling agreement constructed through a series of contracts
between various conferences and bowl games,157 any antitrust challenge to
the BCS would likely name some or all of the BCS participating
conferences and bowl games as defendants.
As outlined in Part III, a plaintiff challenging the BCS under antitrust
law would have three primary antirust claims available to it under Section
One of the Sherman Act: illegal group boycott, price fixing, and tying.158
Although at least one of these claims has traditionally been held per se
illegal, following the Supreme Court’s decision in NCAA it appears that a
challenge to the BCS would be decided under the rule of reason standard.159
Therefore, this section assesses the merits of each of the three most
plausible Section One claims against the BCS by reviewing the applicable
arguments regarding the system’s anti- and procompetitive effects, as well
as any potential less restrictive alternatives.
A.The BCS as an Illicit Group Boycott
The existing literature considering potential antitrust claims against the
BCS has predominantly focused on the system’s vulnerability to a group
boycott claim.160 The Supreme Court has stated that a group boycott exists
155
See, e.g., Edward Mathias, Comment, Big League Perestroika? The Implications of
Fraser v. Major League Soccer, 148 U. PA. L. REV. 203, 21920 (1999).
156
Darling, supra note 27, at 445 (“Section 1 is much broader than section 2 and will
generally reach concerted action that may also be monopolization, without the additional
difficulty of definitively proving monopoly power as an element.”).
157
158
See supra notes 119133 and accompanying text.
159
160
See, e.g., Carroll, supra note 27, at 125960; Corns, supra note 27, at 186; Fenasci,
supra note 27, at 980; Hales, supra note 27, at 115; Kober; supra note 27, at 68; Wallace,
76
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when competitors have collaborated to cut off a rival’s access to a “supply,
facility, or market necessary to enable the boycotted firm to compete.”161
Thus, the existing analyses have primarily considered whether the BCS
constitutes a group boycott insofar as it limits the so-called non-BCS
Conferences’ access to the national championship and other top post-season
bowl games.162
Specifically, under the initial BCS rules, teams from non-BCS
Conferences could only guarantee themselves an invitation to a BCS bowl
by finishing sixth or better in the BCS Standings,163 a feat that no non-BCS
university was able to accomplish during the system’s first six years.164
Non-BCS teams were also consistently passed over for at-large BCS berths
during this time, despite a variety of schools completing extremely strong
seasons.165
In view of this allegedly discriminatory conduct, a number of the initial
commentators argued that the BCS Conferences had effectively blocked the
non-BCS teams from a necessary resource—namely the BCS bowl games
and their accompanying financial payouts—and thus had constructed an
illegal group boycott.166 These analyses predominately focused on the
financial disparities created by the BCS’s differential treatment of the nonBCS Conferences.167 Not only did the BCS’s exclusion of the non-BCS
teams prevent those universities from receiving the substantial payouts
associated with participation in a BCS bowl game, but it also resulted in
additional financial disparities as well. Specifically, because teams in the
BCS Conferences compete annually for a spot in one of the highest profile
post-season bowl games, they tend to receive greater media attention
throughout the season, leading to significant revenue advantages in the form
of increased regular season ticket sales, television contracts, sponsorship
agreements, and alumni and fan donations.168
These revenue and exposure advantages in turn have enabled the BCS
schools to hire better coaches, build better facilities, and recruit better
supra note 27, at 6768.
161
Nw. Wholesale Stationers, 472 U.S. at 294.
162
See, e.g., Carroll, supra note 27; Corns, supra note 27; Fenasci, supra note 27; Hales,
supra note 27; Kober; supra note 27; Wallace, supra note 27.
163
164
See BCS, Alliance & Coalition Games, Year-by-Year, supra note 100, at 47.
165
166
See, e.g., Corns, supra note 27; Hales, supra note 27; McClelland, supra note 12;
167
See Corns, supra note 27, at 188; Hales, supra note 27, at 12022; McClelland, supra
note 12, at 20609; Wallace, supra note 27, at 7779.
168
McClelland, supra note 12, at 207.
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77
student-athletes,169 generally allowing the BCS Conferences to maintain
their competitive advantage over the non-BCS schools on the playing
field.170 Indeed, commentators have noted that the BCS has effectively
created—or, at least, reinforced—a bifurcated structure in major college
football, fortifying the competitive disparity between the BCS and non-BCS
Conferences.171 As a result, many of the initial commentators concluded
that the original BCS system effectively constituted an illicit group boycott
by limiting the non-BCS schools’ access to the BCS bowl games and their
accompanying guaranteed payments.172
However, as discussed above, the BCS ultimately revised its selection
procedures in 2004 following a series of Congressional hearings,173
modifications that increased the non-BCS Conferences’ access to BCS
bowls.174 In particular, the BCS now guarantees a spot to the highest
ranked champion of a non-BCS Conference so long as it either ranks (i) in
the top twelve of the final BCS Standings, or (ii) in the top sixteen of the
final standings and ahead of at least one champion from a BCS
Conference.175 As a result, the number of non-BCS teams participating in
BCS bowl games has increased dramatically in recent years.176
Accordingly, most recent analyses have concluded that the current BCS
system no longer runs afoul of antitrust law, insofar as it does not provide
an insurmountable barrier preventing non-BCS teams from reaching BCS
bowl games.177
Despite the increased representation of non-BCS schools in BCS bowl
games since 2004, some contend that the BCS continues to perpetuate a
group boycott against non-BCS teams by unreasonably preventing non-BCS
169
See id. See also Hales, supra note 27, at 119.
See Hales, supra note 27, at 119 (“The disparity in the revenues received by the BCS
and non-BCS conferences creates an insurmountable obstacle to overcome.”). See also
Craig A. Depken II & Dennis P. Wilson, Institutional Change in the NCAA and
Competitive Balance in Intercollegiate Football, in ECONOMICS OF COLLEGE SPORTS 197,
205 (John Fizel and Rodney Fort eds., 2004) (noting the possibility that “the BCS might
perpetuate the dominance of a small number of teams, thereby reducing competitive
balance”).
171
Rogers, supra note 27, at 28788; Wallace, supra note 27, at 7677.
172
See, e.g., Corns, supra note 27; Hales, supra note 27; McClelland, supra note 12;
173
174
175
BCS Chronology, supra note 31.
176
177
See, e.g., Nixon, supra note 27; Pruitt, supra note 27; Rogers, supra note 27. But see
Schmit, supra note 27 (arguing that the modified BCS continues to violate antitrust law).
170
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teams from competing in the BCS National Championship Game.178
Specifically, although several non-BCS teams have recently finished
undefeated regular seasons, none were selected to play for the national
championship. For example, Utah was passed over for a berth in the BCS
National Championship Game despite being the only university to finish the
2008–09 regular season undefeated.179 Likewise, Boise State and TCU
were left out of the 2009–10 championship game despite both finishing the
regular season undefeated.180
Defenders of the BCS typically brush off such arguments, noting that
both BCS and non-BCS Conference schools are equally eligible to
participate in the BCS National Championship Game, so long as they finish
either first or second in the final BCS Standings.181 In particular, BCS
supporters note that these standings include a computer ranking component,
which ostensibly offers an unbiased assessment of each team’s competitive
strength unaffected by conference affiliation.182 Therefore, defenders of the
BCS assert that all schools, BCS and non-BCS alike, have an equal shot at
playing for the championship game.
There are two primary problems with this defense. First, because each
of the computer rankings used by the BCS incorporates a strength of
178
Matt Canham, Utah A.G. Presses BCS Probe With Feds, SALT LAKE TRIB., Nov. 4,
2010, available at http://www.sltrib.com/sltrib/sports/50601620-77/bcs-shurtleff-utahchampionship.html.csp (last accessed Nov. 8, 2010) (noting that Utah Attorney General
Mark “Shurtleff is convinced the BCS is violating anti-trust laws by making it ‘impossible’
for teams from conferences such as the Mountain West Conference and Western Athletic
Conference to play for the national title”).
179
See 2008 College Football Standings, supra note 103.
180
BCS, Alliance & Coalition Games, Year-by-Year, supra note 100. At the time of
publication of this Article, controversy was yet again brewing with respect to TCU’s and
Boise State’s chances to participate in the 2011 BCS National Championship Game. As of
November 19, 2010, both schools were once again undefeated, but both trailed the topranked University of Oregon (“Oregon”) and second-ranked Auburn in the BCS Standings.
See NCAA College Football BCS Standings Week 12, ESPN.COM, Nov. 14, 2010,
http://espn.go.com/college-football/bcs/_/week/12 (last accessed Nov. 21, 2010).
Therefore, barring a late season loss by Oregon or Auburn, it currently appears that the two
undefeated non-BCS Conference teams will once again be left out of the championship
game in favor of teams from BCS Conferences, despite the fact that TCU and Boise State
both began the season ranked higher than either of the BCS Conference teams. See 2010
NCAA Football Rankings – Preseason, ESPN.COM, http://espn.go.com/collegefootball/rankings/_/week/1 (last accessed Nov. 21, 2010).
181
See, e.g., Carroll, supra note 27 at 1276 (“Indeed, if a non-BCS team finishes the
season ranked among the top two in the BCS standings, it will necessarily compete for the
national championship.”). See also BCS, Alliance & Coalition Games, Year-by-Year,
supra note 100 (discussing the current components of the BCS Standings).
182
See Morehead, supra note 11 at 740 (“the computer component is an objective
calculation used to help determine the BCS poll and should pass a court’s scrutiny”).
Issue 1
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79
schedule component,183 teams from non-BCS Conferences—which
typically face weaker competition in the majority of their in-conference
games—face an uphill battle in securing a top spot in the computer
rankings. More significantly, however, this argument overlooks the fact
that the BCS’s component computer rankings are themselves deeply flawed.
As a number of statisticians have noted, the computer rankings used in the
BCS Standings are highly unreliable because they do not account for a
team’s margin of victory, a significant factor when attempting to accurately
rank teams that have not met head-to-head and have only played twelve or
thirteen regular season games.184 The failure to consider margin of victory
disproportionately impacts schools from the non-BCS Conferences because
they play the majority of their games against weaker in-conference
opponents, and thus must rely on beating lesser competition by significant
margins as evidence of their competitive strength.185 Consequently, despite
its use of purportedly unbiased computer rankings, a case can still be made
that the BCS unfairly discriminates against non-BCS Conference teams
with respect to their potential participation in the national championship
game by using flawed computer ranking systems that fail to account for
margin of victory.
Ultimately, however, such a group boycott claim is admittedly not as
strong as the one that could have generally been asserted prior to the 2004
modifications to the BCS selection procedures. This is because the BCS
does not directly discriminate against non-BCS teams when selecting the
participants in the BCS National Championship Game, and greater
participation by non-BCS Conference teams in BCS bowl games under the
current BCS selection procedures suggest that these teams now have a much
greater chance to reach the title game. In any event, another, perhaps
stronger, basis for a group boycott claim against the BCS remains—one that
has been entirely overlooked by the existing scholarly analyses.
Specifically, even if the BCS selection procedures no longer constitute
an illicit group boycott following the 2004 modifications, a plausible group
boycott claim can be asserted insofar as the BCS unevenly distributes
revenue to the detriment of the non-BCS Conferences. In other words, even
when a non-BCS university is selected to participate in a BCS bowl game,
its conference does not receive a financial payout equal to those received by
the BCS Conferences. As noted above, following the 2009–10 season, each
183
BCS Selection Procedures, supra note 9 (“Each computer ranking provider accounts for
schedule strength within its formula.”).
184
Jeff Passan & Dan Wetzel, Numbers Are a Weak Spot in the B.C.S. Standings, N.Y.
TIMES, Oct. 17, 2010, at SP-13.
185
See Ralph D. Russo, Throw Out the Scores? The BCS Does, YAHOO.COM, Nov. 4,
2010, http://rivals.yahoo.com/ncaa/football/news?slug=ap-marginofvictory (noting same).
80
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BCS Conference received a payout of at least $19.7 million, with the Big
Ten and SEC receiving $24.2 million each due to the fact they both had two
teams selected to participate in BCS bowls.186 In contrast, the five nonBCS Conferences shared a total of $24 million, despite both TCU and Boise
State having been selected to play in a BCS bowl game.187 While the
Mountain West and WAC (TCU’s and Boise State’s respective
conferences) divided the lion’s share of that revenue, they nevertheless
received only $9.8 and $7.8 million, respectively, for their appearances—
totals less than half of those received by the BCS Conferences.188
Therefore, despite increased access to BCS games for the non-BCS schools,
the non-BCS Conferences still face differential treatment with respect to the
financial payouts accompanying their appearance in a BCS bowl game.
Thus, while the non-BCS Conferences may have had a more traditional
group boycott case to assert against the BCS prior to the 2004 modifications
to the BCS selection procedures, critics can still argue that the system
unfairly disadvantages the non-BCS Conferences by providing them with a
disproportionately smaller share of revenues for their BCS bowl
appearances. Indeed, the fact that the BCS has not completely blocked the
non-BCS Conferences’ access to BCS bowl games is not enough to defeat a
group boycott claim. As discussed above, the Supreme Court in Klor’s
found that a plausible group boycott claim had been asserted when the
defendants were accused of colluding to prevent the plaintiff from doing
business at the same price and under the same conditions as its rivals, even
when the collusion did not necessarily result in a literal refusal to deal.189
Similarly, critics can allege that the BCS has conspired to prevent the nonBCS Conferences from doing business under the same prices and conditions
offered to the BCS Conferences. Even in those cases where a team from a
non-BCS Conference is able to overcome the odds and earn an invitation to
a BCS bowl game, its conference will nevertheless receive little more than
half as much money as the BCS Conferences for its participation.190 As a
result, the non-BCS Conferences will never be able to match the revenues
generated by teams in the BCS Conferences, thus helping to enable the BCS
Conferences to maintain a perpetual competitive advantage.191
Should such a group boycott claim be asserted against the BCS, the
186
Id.
188
Bowl Championship Series Five Year Summary of Revenue Distribution 2005-06
through 2009-10, supra note 10.
189
190
191
187
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81
court would presumably apply the rule of reason, as discussed above.192 In
light of the anticompetitive effects that BCS opponents can assert,193 and
the fact that the BCS likely constitutes a relevant market,194 the court would
presumably shift the burden to the BCS to justify itself through a showing
of procompetitive benefits. Commentators defending the BCS from
antitrust attack have traditionally identified several procompetitive benefits
generated by the system. First and foremost, BCS proponents point to the
creation of a national championship game as being a significant
procompetitive benefit.195 These commentators note that prior to the
creation of the BCS, only rarely did a college football season culminate
with the two top ranked teams in the country facing each other in a postseason bowl game.196 By guaranteeing a national championship game every
season, BCS supporters argue that the system has created a substantial
benefit for college football fans.197 However, the significance of this
benefit is mitigated by the regular controversy surrounding the selection of
teams to play in the BCS National Championship Game, as recounted
above.198
In addition to the creation of a national championship game, BCS
proponents also point to other procompetitive benefits. First, by dispensing
with pre-existing contractual agreements between particular conferences
and bowl games, BCS supporters argue that the BCS has created better,
more compelling post-season bowl match-ups.199 For this same reason,
BCS proponents have also asserted that the BCS has actually increased
access to marquee bowl games for non-BCS Conference teams,200 as prior
to the BCS the various contractual agreements made it nearly impossible for
a team from a non-BCS Conference to be selected to play in the Fiesta,
Orange, Rose, or Sugar Bowls.201 Therefore, these commentators argue that
even under its initial, more restrictive selection procedures, the BCS
192
See supra notes 168172 and 186188 and accompanying text.
194
195
See, e.g. Carroll, supra note 27, at 127374; Fenasci, supra note 27, at 98586; Kober;
196
See supra notes 51–53 and accompanying text.
197
See, e.g. Carroll, supra note 27, at 127375; Fenasci, supra note 27, at 98586; Kober;
198
199
See Kober; supra note 27, at 75 (“The BCS format has also been successful in creating
competitive contests at the end of the season.”).
200
Carroll, supra note 27, at 127578; Fenasci, supra note 27, at 98788.
201
Only once was a non-BCS team invited to play in one of these four bowls during the
twenty years preceding the formation of the BCS. Carroll, supra note 27, at 1276;
Moreland, supra note 11, at 741.
193
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actually benefited the non-BCS Conferences by making it possible, even if
highly unlikely, that a non-BCS team would be invited to one of the most
prestigious bowl games. However, on this point other commentators have
argued that the prior system of contractual arrangements was itself “a web
of illegal exclusive dealing arrangements,” and thus at best the BCS simply
replaced one anticompetitive system with a slightly less anticompetitive, but
still illegal system.202
Should a judge or jury find that the BCS’s asserted procompetitive
benefits outweigh the anticompetitive harms it inflicts on the non-BCS
Conferences, the BCS would nevertheless face an additional hurdle under
the rule of reason, namely the less restrictive alternatives inquiry. In this
third phase of the rule of reason, courts consider whether the asserted
procompetitive benefits could be obtained in another manner without the
accompanying anticompetitive side effects.203 The BCS is particularly
susceptible to the less restrictive alternatives inquiry, as the procompetitive
benefits identified by its supporters could easily be obtained via less
burdensome means.204 Indeed, while the much clamored for post-season
playoff tournament would in all likelihood be too radical a deviation from
the current system to constitute a less restrictive alternative for antitrust
purposes,205 a number of other, more modest alternatives exist.
Specifically, the primary asserted benefit of the BCS—the creation of a
national championship game206—can easily be accomplished without the
anticompetitive effect of the BCS’s unequal revenue distribution. The
existence of a championship game does not depend in any way on
disparities in revenue distribution, but rather simply requires that the
nation’s top two teams be matched in a single post-season game. Nor for
that matter is it necessary that the national championship game be paired
with the BCS and its uneven revenue distribution scheme at all, as the game
202
McClelland, supra note 12, at 212 (quoting Gary R. Roberts, BCS Backers Forward
Flawed Defense, THE NCAA NEWS (Sept. 29, 2003),
http://web1.ncaa.org/web_files/NCAANewsArchive/2003/Editorial/bcs%2Bbackers%2Bfo
rward%2Bflawed%2Bdefense%2B-%2B9-29-03.html).
203
204
See Antitrust Implications of the College Bowl Alliance: Hearing Before the Subcomm.
on Antitrust, Business Rights and Competition, S. Comm. on the Judiciary, 105th Cong.
92, 97 (1997) (statement of Gary R. Roberts, then-Professor of Law and Sports Law
Program Director, Tulane Law School) [hereinafter Roberts Congressional Statement]
(arguing with respect to the BCS’s predecessor the Bowl Alliance, “[i]f the less restrictive
alternative doctrine means anything, this must be a classic example of where it should be
applied”); Pruitt, supra note 27, at 145 (“The greatest threat to the BCS in a rule of reason
analysis would most likely be the ‘less restrictive alternative’ test.”).
205
See, e.g., Fenasci, supra note 27, at 994–95.
206
Id. at 98586; Kober; supra note 27, at 7374.
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83
could easily be held as a stand-alone event without any ties to the other
existing BCS bowl games.207 Thus, because a national championship game
could be held absent any of the BCS’s financial disparities, this particular
procompetitive benefit of the BCS could easily be realized through less
restrictive alternative means—either as a stand-alone game separate from
the rest of the BCS, or as part of a BCS system that more equitably
distributes its revenue to all participants.
Similarly, other benefits of the BCS regularly cited by its supporters—
namely, the creation of more compelling post-season bowl games and
increased access for the non-BCS Conferences208—also do not rely upon
the BCS’s uneven revenue distribution scheme. Indeed, both of these
benefits could also be obtained through a system in which revenue was
distributed more equitably amongst all participating universities and
conferences. Thus, these benefits are also obtainable through less
restrictive means, and cannot save the BCS under a rule of reason analysis.
In lieu of any sufficiently compelling procompetitive arguments, the
BCS may turn to other potential defenses. First, the BCS could argue that
the current distribution scheme is not anticompetitive, but instead simply
reflects the fact that television networks value the broadcast rights for
games featuring BCS Conference schools more than those for games
involving non-BCS teams.209 In other words, BCS supporters might argue
that because the inclusion of the BCS Conferences generates a significant
portion of the revenues realized by the BCS, those conferences rightfully
deserve to split the lion’s share of BCS revenues amongst themselves.
However, this argument is belied by the television ratings for BCS
bowl games involving non-BCS teams. Indeed, of the five BCS bowl
games to date featuring non-BCS universities, three have received higher
television ratings than other BCS bowl games the same season featuring
only BCS Conference teams.210 Most significantly, the 2010 Fiesta Bowl,
which featured two non-BCS schools playing one another—Boise State and
TCU—outdrew the Orange Bowl, which featured two teams from BCS
Conferences, by a significant margin.211 Accordingly, the argument that the
BCS’s unequal revenue distribution is justified by the reduced appeal of
207
See, e.g., Corns, supra note 27, at 198; Darling, supra note 27, at 46566; Schmit,
supra note 27, at 251.
208
209
Michael Smith, The BCS’ Big Split, SPORTS BUS. J., Jan. 25, 2010,
http://www.sportsbusinessjournal.com/article/64647 (reporting such an argument made by
Nebraska chancellor Harvey Perlman).
210
TV Ratings, BCSFOOTBALL.ORG, http://www.bcsfootball.org/news/ story?id=4819384
(last accessed Oct. 8, 2010).
211
Id.
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games involving non-BCS universities is contradicted by the actual
television ratings for these games.
Alternatively, even if one accepts the proposition that all of the BCS
Conferences are categorically more desirable to television networks than are
any of the non-BCS Conferences, this defense by the BCS would still
succumb to the least restrictive alternative inquiry. Specifically, a wide
variance exists in the attractiveness of each of the six BCS Conferences to
television networks. Currently the BCS Conferences have individual
television contracts worth anywhere from $242 million (Big Ten) to $33
million (Big East) per year.212 Therefore, rather than simply distributing an
equal amount of revenue to each BCS Conference, with any participating
non-BCS Conferences receiving a predetermined, lesser amount, a less
restrictive alternative would be for the BCS to distribute its revenue such
that each conference is rewarded for the value it contributes individually to
the BCS. Such a system would dispense with the categorical discrimination
against the non-BCS Conferences, and instead distribute revenue on a more
meritorious basis across the entire BCS.
Another potential defense available to the BCS is that even if it has
effectively constructed a group boycott of the non-BCS Conferences, its
boycott does not harm consumer welfare and thus is not a cognizable injury
under federal antitrust law.213 Put differently, the BCS can argue that
consumers of college football—i.e., college football the fans—are not
harmed by any disparities in revenue paid to the non-BCS Conferences, and
therefore at most the alleged boycott injures rivals to the BCS Conferences,
but not the competitive process itself.214
The strength of this potential defense is unclear. As an initial matter,
the applicability of the consumer welfare requirement in group boycott
cases is uncertain, as the Supreme Court has not yet reevaluated its prior
boycott precedents following the increased focus on consumer welfare in
antitrust law.215 Indeed, at its root a classic group boycott claim could be
212
Matt Peloquin, 2009 College Sports TV Revenue by Conference,
COLLEGESPORTSINFO.COM, Dec. 25, 2009, http://news.collegesportsinfo.com/2009/12/
2009-college-sports-tv-revenue-by.html.
213
See, e.g., The Bowl Championship Series: Is it Fair and In Compliance with Antitrust
Law?, Senate Judiciary Comm., Subcommittee on Antitrust, Competition Policy and
Consumer Rights, 111th Cong. (2009) (statement of William Monts, outside counsel for the
BCS) [hereinafter Monts Congressional Statement] (arguing that consumer welfare is not
harmed by the BCS’s uneven system of revenue distribution). For more on the consumer
welfare requirement in antitrust generally, see supra note 116 and accompanying text.
214
See Rogers, supra note 27, at 297 (“Consumer harm . . . would be . . . difficult for nonBCS schools to establish.”).
215
See generally Rogers, supra note 116 (noting that applicability of consumer welfare
requirement is uncertain in group boycott cases).
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85
said to ultimately protect competitors themselves, rather than competition
generally, rendering consumer welfare of potentially questionable
significance in group boycott cases.216
However, should a court determine that harm to consumer welfare
must be established, such a requirement would not necessarily doom a
group boycott claim against the BCS. As an initial matter, a plaintiff
challenging the BCS could point to the 2004 decision in Metropolitan
Intercollegiate Basketball Ass’n v. National Collegiate Athletic Ass’n, in
which the U.S. District Court for the Southern District of New York
considered whether consumer welfare was harmed by a rule preventing
universities selected for the NCAA’s college basketball national
championship tournament from participating in the competing post-season
National Invitational Tournament (“NIT”).217 The NCAA—like the
defenders of the BCS—argued that its regulation did not harm consumers,
but instead only harmed a competitor to the NCAA, and thus did not present
a cognizable antitrust claim.218 The court rejected the NCAA’s consumer
welfare argument, finding that it could not distinguish harm to the
competing NIT from harm to competition itself. Specifically, the court held
that because the NCAA’s rule ultimately prevented the competing NIT from
offering consumers the most competitive basketball possible, consumer
welfare was sufficiently implicated to allow the NIT to proceed with its
antitrust case.219
Opponents of the BCS can similarly argue that the BCS’s
disproportionate revenue distribution system harms consumer welfare by
decreasing the competitiveness of college football games played by nonBCS Conference teams. As discussed above, BCS Conference schools use
the disproportionately higher revenue they receive from the BCS to hire
better coaches, recruit better athletes, and build better facilities than nonBCS Conference teams.220 As a result, the BCS helps perpetuate significant
competitive discrepancies between BCS and non-BCS Conference teams on
the field, discrepancies that ultimately reduce the competitiveness of games
played by non-BCS Conference teams.221 Fans therefore lose the
opportunity to enjoy the most competitive football games possible, the same
216
See id. at 667 (“All of the decisions involving exclusion of competitors have, without
exception, focused on the exclusionary effect on the target rather than the impact of the
collective action on the market.”).
217
Metropolitan Intercollegiate Basketball Ass’n v. National Collegiate Athletic Ass’n,
339 F.Supp.2d 545 (S.D.N.Y. 2004).
218
Id. at 551.
219
Id.
220
221
Rogers, supra note 27, at 28788; Wallace, supra note 27, at 7677.
86
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harm to consumer welfare that was identified by the court in Metropolitan
Intercollegiate Basketball Ass’n.222
Moreover, because many BCS
Conference schools use their significant football revenues to support a
variety of other non-revenue generating sports teams, the financial
disparities wrought by the BCS can ultimately dampen competition
throughout collegiate athletics, allowing the BCS schools to field much
stronger teams than non-BCS Conference schools across a number of
different sports.223
The effect of the BCS’s disproportionate revenue distribution on the
competitiveness of the non-BCS Conference schools is especially relevant
in a consumer welfare context because, as Professor Gary Roberts has
persuasively argued, “[c]onsumers of college athletics are to a great extent
motivated by emotional loyalty to a particular school,” with many fans
expressing interest in a particular game “primarily because they are
personally affiliated with one of the schools or because a team is affiliated
with a local or regional college.”224 For example, Professor Roberts noted
that “many fans of the University of Cincinnati football team are not
interested in Florida State’s team even if it is the best team in the
country.”225 Along these same lines, it is hard to imagine that fans in, say,
Boise, Idaho would be persuaded that they are not harmed at all by a BCS
system that gives their local team (Boise State) a disproportionate share of
revenue for its participation in a BCS bowl game—a discrepancy which in
turn directly affects the school’s athletics budget, and thus ultimately the
quality of the various sports teams that it fields.
Moreover, a plaintiff challenging the BCS can also generally allege
consumer harm by pointing to recent surveys showing that upwards of 90
percent of college football fans disapprove of the BCS.226 While much of
this unpopularity does not directly result from the BCS’s revenue
distribution discrepancies (but rather reflects the prevailing desire for a
playoff in FBS college football), it nevertheless is indicative of the fact that
the BCS generally inflicts harm upon the consumers of college football.
Therefore, given the general unpopularity of the BCS among college
222
Metropolitan Intercollegiate Basketball Ass’n, 339 F.Supp.2d at 551.
See Sally Jenkins, It’s Time For Congress To Sack the BCS, Wash. Post, Nov. 11, 2010,
available
at
http://www.washingtonpost.com/wp-dyn/content/article/2010/11/10/
AR2010111006922.html (last accessed Nov. 11, 2010) (noting same).
224
Roberts Congressional Statement, supra note 204. See also Hales, supra note 27, at
122 (arguing same).
225
Roberts Congressional Statement, supra note 204.
226
See Dan Wetzel, Obama Could Bust the BCS With Broncos, YAHOO.COM, Jan. 5, 2010,
http://rivals.yahoo.com/ncaa/football/news?slug=dw-obamaplayoff010510 (last accessed
Nov. 8, 2010) (noting a recent “a Sports Illustrated poll found 90 percent of college fans
have a negative opinion of” the BCS).
223
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87
football fans, as well as the favorable decision in Metropolitan
Intercollegiate Basketball Ass’n, opponents of the BCS can credibly allege
that the BCS’s uneven revenue distribution policies harm consumer welfare.
Ultimately though, the persuasiveness of this argument will likely vary from
court to court.
Finally, although perhaps not offering an absolute defense to a group
boycott claim, the BCS would also likely defend itself from such a charge
by emphasizing that the non-BCS Conferences have themselves been a
party to the BCS agreements ever since modifications were made to the
BCS in 2004.227 Thus, the BCS can argue that the non-BCS Conferences
have had an opportunity to participate in any decisions regarding the BCS’s
selection procedures and its methods of distributing revenue. However, the
significance of this argument is minimal given that the non-BCS
Conferences’ have only been granted one collective vote out of the eight
total on the BCS Presidential Oversight Committee.228 Accordingly, the
non-BCS Conferences lack any meaningful ability to modify the BCS’s
revenue distribution policies. Indeed, this defense would not even defeat a
lawsuit filed by a disadvantaged non-BCS Conference or university, as
courts have regularly entertained antitrust suits in the professional sports
context by teams challenging league-wide rules that they themselves had
previously agreed to, either implicitly or explicitly.229
Therefore, although the outcome of a rule of reason trial is generally
difficult to predict,230 opponents of the BCS have a reasonably strong case if
they allege that the system’s unequal revenue distribution constitutes an
illegal group boycott. While the BCS will be able to cite several
procompetitive benefits of varying strength, ultimately those same benefits
could be achieved through less restrictive alternative means. The BCS’s
strongest defense appears to be that its alleged restraint does not harm
consumer welfare, although its chances of succeeding on that argument are
far from certain. Accordingly, the BCS remains quite susceptible to attack
as a group boycott under a rule of reason analysis, despite its 2004
modifications to increase access for the non-BCS Conferences.
227
Bleymaier Congressional Statement, supra note 94.
229
See, e.g., Chicago Prof’l Sports Ltd. P’ship v. Nat’l Basketball Ass’n, 95 F.3d 593 (7th
Cir. 1996) (considering case filed by a National Basketball Association team against league
television policies); Sullivan v. Nat’l Football League, 34 F.3d 1091 (1st Cir. 1994)
(deciding lawsuit filed by NFL owner challenging NFL rule prohibiting public ownership
of teams); Los Angeles Memorial Coliseum Commission v. Nat’l Football League, 726
F.2d 1381 (9th Cir. 1984) (considering antitrust challenge to an NFL rule limiting the
movement of league franchises).
230
Stucke, supra note 33, at 1422–29.
228
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B.The BCS and Price Fixing
Although a potential group boycott claim against the BCS has received
the vast majority of the attention in the academic literature, a price fixing
claim against the BCS also provides a strong basis for attacking the BCS
under federal antitrust law. Specifically, a prospective plaintiff can assert
that the BCS constitutes an illegal price fixing scheme by both enabling
formerly independent, competing conferences and bowl games to
collectively establish a common pay scale for participation in all BCS
bowls, as well as by allowing several of the BCS bowl games to eliminate
pricing competition by collectively selling their broadcast rights to
television networks.
First, the BCS fixes the payments made to participating conferences.
Historically, each bowl game determined for itself how much of a financial
payment to offer universities, a practice that continues today for bowl
games outside of the BCS.231 However, upon the formation of the Bowl
Alliance, one of the BCS’s predecessor entities,232 the Alliance bowls and
participating conferences agreed to a uniform scale under which all bowl
payouts were determined.233 The results of this price fixing scheme were
immediately apparent, with the payouts for the three Alliance bowls—the
Fiesta, Orange, and Sugar Bowls—more than doubling between the 1994
and 1996 seasons.234 These increased costs were ultimately passed on to
college football fans, through higher ticket prices and television fees, thus
harming consumer welfare.235
As noted above, the practice of collectively determining the payouts for
participating bowl games has continued under the BCS.236 For example,
following the 2009–10 season, the BCS determined that each of the six BCS
Conferences would receive a minimum of $19.7 million for their
participation in the system, with both the Big 10 and SEC getting an
additional $4.5 million for each having had a second team selected to
participate in a BCS game.237 Meanwhile, the BCS collectively determined
that the five remaining non-BCS Conferences would receive a total of only
231
See Thomas O'Toole, $17M BCS Payouts Sound Great, But ...: League, Bowl Rules
Skew Schools’ Cuts, USA TODAY, Dec. 6, 2006, at 1C (noting that non-BCS bowls
negotiate directly with conferences, sometimes resulting in different payouts being offered
to the two teams competing against one another in a single bowl game).
232
233
Roberts Congressional Statement, supra note 204.
234
Id.
235
Id.
236
237
Bowl Championship Series Five Year Summary of Revenue Distribution 2005–06
through 2009–10, supra note 10.
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89
$24 million, despite two universities from non-BCS Conferences having
been selected for BCS bowl games that season.238
Payouts under the BCS are thus established without regard to the
competitive strength or marketability of any individual participating
university. In other words, two BCS Conferences each placing one team in
a BCS bowl game will earn exactly the same, regardless of whether their
champion is the top ranked team in the country and selected to play in the
BCS National Championship Game, or the lowest ranked team participating
in a lower profile BCS game. This was illustrated in the 2005–06 season,
when Pac-10 champion and defending national champion USC was ranked
first in the nation and selected to play for the national championship, while
ACC champion Florida State received an automatic bid to play in the
Orange Bowl despite only being ranked 22nd in the nation.239
Notwithstanding this significant disparity in ranking and marketability,240
both the Pac-10 and ACC received identical payments of around $16.6
million from the BCS.241 In a competitive marketplace, the Pac-10 would
surely have received a much greater payment than the ACC by virtue of
being the host conference of the nation’s number one team.
Second, a price fixing claim can also be alleged against the BCS due to
the fact that various BCS bowls collectively sell their broadcast rights to
television networks. Historically, each bowl individually negotiated the
sale of its rights to television networks, with the price paid for the broadcast
rights to a particular game thus determined in a competitive marketplace.
However, following the formation of the BCS in 1998, three of the BCS
bowls—the Fiesta, Orange, and Sugar Bowls—have sold their broadcast
rights collectively, eliminating any pricing competition between these bowl
games.242
As a result, the BCS bowls have been able to charge television
networks significantly higher prices for their broadcast rights. For example,
when the BCS was formed in 1998, ABC Sports agreed to pay an estimated
$730 million over eight years for the initial rights to broadcast the four BCS
238
Id.
All-time Results, BCSFOOTBALL.ORG, http://www.bcsfootball.org/news/
story?id=4809856 (last accessed Oct. 8, 2010).
240
See Zimbalist, supra note 27, at 38 (noting that “the national championship game
regularly has the strongest [television] ratings [of all BCS bowl games] by a healthy
margin”).
241
Bowl Championship Series, Five Year Summary of Revenue Distribution, 2003-2007,
NCAA.ORG, available at http://www.ncaa.org/wps/wcm/connect/
f54bee004e0b9a869ce0fc1ad6fc8b25/BCS++Revenue+Distribution+by+Conference+2007
-08.pdf?MOD=AJPERES&CACHEID=f54bee004e0b9a869ce0fc1ad6fc8b25 (last
accessed Oct. 8, 2010).
242
239
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bowl games,243 approximately two and a half times the previous annual rate
paid for the broadcast rights to the same four games.244 Following the
completion of that initial agreement with ABC, the broadcast rights to the
Fiesta, Orange, and Sugar Bowls, along with the rights to the newly created
BCS National Championship Game for the years in which it was hosted by
one of those three games, were collectively sold to Fox for an estimated
$320 million over four years.245 Most recently, ESPN paid $125 million per
year to land a four-year contract for the broadcast rights to the same
games.246 Therefore, by working together to jointly sell the broadcast rights
to their games, the Fiesta, Orange, and Sugar Bowls have been able to
extract significantly higher sums of money from television networks than
they were ever able to individually charge in a competitively priced market.
Given that the BCS openly allows formerly competing conferences and
bowl games to both collectively agree upon the amount to be paid for
participation in BCS bowl games, as well as eliminate pricing competition
when selling their television broadcast rights, a prima facie case of price
fixing can be asserted against the BCS. The BCS would likely defend itself
against such a claim by arguing that the BCS member conferences and bowl
games have effectively formed a joint venture, and therefore their joint
decisions regarding the amounts paid to participating conferences or
charged to television networks do not violate antitrust law.247 However, the
mere fact that competitors have formed a joint venture alone does not shield
their collective activities from scrutiny under the Sherman Act.248 Rather,
courts consider whether the challenged conduct is central to the core
operations of the joint venture, or instead ancillary to the venture’s
243
245
Michael Hiestand, Fox to Announce Deal to Air Fiesta, Orange, Sugar bowls in ‘06,
USATODAY.COM, Nov. 21, 2004, http://www.usatoday.com/sports/columnist/ hiestandtv/2004-11-21-hiestand_x.htm (last accessed Oct. 17, 2010).
246
Tom Weir & Michael Hiestand, BCS Officially Headed to ESPN Starting in 2011,
USATODAY.COM, Nov. 19, 2008, http://www.usatoday.com/sports/college/ football/200811-17-bcs-fox-espn_N.htm (last accessed Oct. 17, 2010).
247
See Monts Congressional Statement, supra note 213 (arguing that the BCS should be
analyzed as a “joint venture among the various conferences and institutions”).
248
See Am. Needle, 130 S. Ct. at 2215 (“If the fact that potential competitors shared in
profits or losses from a venture meant that the venture was immune from §1, then any
cartel ‘could evade the antitrust laws simply by creating a ‘joint venture’ to serve as the
exclusive seller of their competing products.’”) (quoting Major League Baseball Props.,
Inc. v. Salvino, Inc., 542 F.3d 290, 335 (2d Cir. 2008) (Sotomayor, J., concurring)). See
also Gabriel Feldman, The Puzzling Persistence of the Single Entity Argument for Sports
Leagues: American Needle and the Supreme Court's Opportunity to Reject a Flawed
Defense, 2009 WISC. L. REV. 835, 865–66 (“A determination that cooperation is necessary
for the formation of a venture does not immunize all of the operations of that venture.”).
244
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91
fundamental purpose.249 The legality of these latter, “ancillary restraints”—
i.e., those which reasonably and necessarily affect operations outside the
natural scope of the joint venture—is judged under the rule of reason by
balancing “the injury to competition [from the ancillary restraint] against
[its] purported benefits.”250
It will be difficult for the BCS to argue that its price fixing activities
are central, and not ancillary, to the underlying purpose of the BCS. Indeed,
the BCS’s own website states that the system is “designed to ensure that the
two top ranked teams in the country meet in the national championship
game, and to create exciting and competitive matchups among eight other
highly regarded teams in four other bowl games.”251 In other words, the
basic purpose of the BCS is simply to coordinate compelling college
football bowl game pairings, and not to distribute revenue or negotiate
television contracts. Indeed, with the exception of the BCS National
Championship Game that was created in 2006, the BCS has not itself
created or produced any football games; instead, it has simply facilitated the
scheduling of better matchups in the preexisting BCS bowl games.
Therefore, any agreement as to the payouts given to participants in the BCS
bowls, or the prices charged for the broadcast rights to these games, are not
central to the primary purpose of the BCS joint venture. Instead, these price
fixing restraints would at best be considered ancillary restraints
supporting—but not directly essential to—the BCS’s primary objective.
However, an argument can be made that the BCS’s price fixing
restraints are not even properly characterized as ancillary. Although the
BCS will assert that the various participating conferences would have been
unwilling to enter the original BCS agreement without being guaranteed
uniform bowl payouts for their participation, one could certainly argue that
this agreement was not reasonably necessary to form the joint venture.
Indeed, the allure of playing in a national championship game, along with
the already substantial payouts previously offered independently by the
various BCS bowls, may very well have been sufficient to persuade all of
the BCS Conferences to participate. Similarly, the BCS will have an even
more difficult time arguing that the collective sale of television broadcast
rights is necessary to promote the venture’s fundamental objective of
scheduling exciting bowl matchups. The BCS framework in no way
requires that the Orange, Fiesta, and Sugar Bowls are all broadcast on the
same television network, let alone that the three bowls collectively negotiate
249
Thomas A. Piraino, Jr., The Antitrust Analysis of Joint Ventures After the Supreme
Court’s Dagher Decision, 57 EMORY L.J. 735, 744 (2008).
250
Sullivan, 34 F.3d at 1102; see also Feldman, supra note 248 at 865 n.203 (citing
additional cases).
251
The BCS Is ..., supra note 22.
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the sale of their broadcast rights, as evidenced by the fact that the BCS has
survived even though the Rose Bowl has continued to negotiate its own
television agreement.252
In any event, regardless of whether these price fixing schemes are
classified as ancillary, such a claim against the BCS would likely be judged
under the rule of reason. Indeed, although horizontal price fixing has
traditionally been held to be per se illegal under Section One of the
Sherman Act,253 following the Supreme Court’s decision in NCAA254 any
price fixing claim against the BCS will presumably be decided under the
rule of reason, for the reasons discussed in Part III above.255 Moreover, the
BCS could also argue that per se illegality for its bowl appearance payment
scheme is inappropriate because the arrangement contains both horizontal
and vertical price fixing agreements,256 the latter of which are to be judged
under the rule of reason following the Supreme Court’s 2007 opinion in
Leegin Creative Leather Products v. PSKS, Inc.257 Therefore, the legality
of the BCS’s price fixing schemes would likely be judged by weighing their
anticompetitive effects against any procompetitive benefits.
A court considering the BCS’s price fixing schemes should find their
anticompetitive effects to be readily apparent, given that both restraints are
at best ancillary to the BCS’s fundamental objective, and considering that
the Supreme Court has declared that “no elaborate industry analysis is
required to demonstrate the anticompetitive character of [a price fixing]
agreement.”258 Indeed, the BCS has eliminated any pricing competition
between the formerly independent bowl games and conferences. Thus, the
BCS would bear the burden of proving that its price fixing schemes yield
sufficient procompetitive benefits to outweigh their clear anticompetitive
effects.
As with the group boycott claim discussed above,259 the creation of a
national championship game provides little procompetitive justification
with respect to a potential price fixing claim against the BCS. Neither a
252
ESPN, BCS Agree to Four-year Deal for Television, Radio, Digital Rights, supra note
130 (noting that unlike the other BCS games, which will be broadcast on ESPN, “[t]he
Rose Bowl will continue to be televised on ABC through 2014 under a separate, previous
contract”).
253
See, e.g., Feldman, supra note 114, at 577–78.
254
See NCAA, 468 U.S. at 103.
255
256
See Carroll, supra note 27, at 1264–65 (noting that the BCS includes both horizontal
and vertical restraints).
257
551 U.S. 877 (2007).
258
See NCAA, 468 U.S. at 109 (quoting Nat’l Soc’y of Prof’l Eng’rs v. United States, 435
U.S. 679, 692 (1978)).
259
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93
common pay scale across the BCS bowl games, nor the collective sale of
broadcast rights are in any way necessary to stage a national championship
game. Thus, a championship game could easily be established via less
restrictive means. For the same reason, the BCS’s other procompetitive
arguments considered with respect to a group boycott claim would similarly
fall short when applied to a price fixing claim.260
Instead, the more plausible—and perhaps only—procompetitive
argument available to the BCS is that the establishment of a common pay
scale for all BCS bowl games helps to maintain competitive balance in
college football. Specifically, the BCS may elect to argue that its uniform
bowl payouts are necessary to prevent any single university or conference
from developing a significant financial advantage over its competition. As
discussed above, universities can use such revenue disparities to build better
facilities and retain better coaches than their rivals operating on smaller
budgets.261 Therefore, the BCS could assert that its common pay scale
helps maintain competitive balance by ensuring that each of the top
conferences earn the same amount for their participation in the marquee
bowl games.
The BCS will face two significant hurdles in order to convince a court
that this competitive balance concern justifies its price fixing scheme. First,
the BCS would be forced to confront the argument that its preferential
treatment of the six BCS Conferences actually decreases competitive
balance across college football. As discussed above, many commentators
have argued that the BCS in fact perpetuates competitive imbalance, insofar
as it gives the BCS Conferences a consistent revenue advantage over the
non-BCS Conferences, a disparity that enables the six favored conferences
to maintain their historical competitive dominance over the traditionally
weaker non-BCS Conferences.262
Second, even if the BCS convinces a judge or jury that the system does
not in fact decrease overall competitive balance in college football, its
competitive balance argument would nevertheless face another hurdle: the
fact that the Supreme Court previously considered and rejected a similar
defense in the NCAA case. There, the NCAA attempted to justify its
regulation fixing the price that universities charged television networks to
broadcast football games on the grounds that the restriction helped to
maintain competitive balance among NCAA member institutions.263
Although the Supreme Court accepted that maintenance of competitive
balance was generally a legitimate interest for the NCAA to pursue, it
260
261
262
263
See id.
See NCAA, 468 U.S. at 9194, 117.
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nevertheless rejected the proposition that competitive balance concerns
justified the particular price fixing scheme at issue.264 Specifically, the
Court held that the NCAA’s plan was poorly suited to achieve competitive
balance insofar as it failed to either regulate the overall amount of money
that a university could spend on its football program, or the ways in which
colleges could spend football-related revenues.265 The Court noted that the
NCAA instead simply imposed “a restriction on one source of revenue that
is more important to some colleges than to others.”266 The Court further
found that the NCAA presented “no evidence that this restriction produces
any greater measure of equality throughout the NCAA than would a
restriction on alumni donations, tuition rates, or other revenue-producing
activity.”267 Accordingly, the Court held that the NCAA’s price fixing
scheme was poorly suited to achieve its interest in maintaining competitive
balance, and thus did not outweigh the anticompetitive effects of the
challenged restraint.
Given the Supreme Court’s decision in NCAA, the BCS will have a
difficult time arguing that its common pay scale price fixing scheme
sufficiently enhances competitive balance to outweigh the agreement’s clear
anticompetitive harms. As in NCAA, the BCS only regulates one source of
football-related revenue earned by the conferences and universities, and
does not affect other substantial sources of revenue such as alumni
donations, regular season ticket sales, television contracts, and sponsorship
agreements.268 Moreover, like the regulation struck down by the Supreme
Court in NCAA, the BCS places no limitations on the manner in which
football-related revenues may be used. Therefore, it is difficult to imagine
that a court would accept the BCS’s competitive balance argument in light
of the NCAA precedent.
However, even if a court were willing to accept the BCS’s competitive
balance argument as a justification for its fixing of the prices paid to
conferences participating in BCS bowl games, that argument would not
provide a justification for the elimination of competition between the Fiesta,
Orange, and Sugar Bowls when selling their broadcast rights to television
networks. Indeed, while the collective marketing of the television rights to
264
Id. at 117.
Id. at 119.
266
Id.
267
Id.
268
See, e.g., McCormick & McCormick, supra note 40, at 522 (noting that many
universities generate significant football revenues through both ticket sales and related
donations); Jack Carey & Andy Gardiner, Commercialized College: Corporate Sponsors in
Spring, USA TODAY, http://www.usatoday.com/sports/college/football/2009-04-16-springgame-sponsorship_N.htm (last accessed Oct. 8, 2010) (noting increase in football-related
corporate sponsorships).
265
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these bowls certainly helps generate some of the significant revenues
distributed by the BCS, ultimately it is not necessary to maintain
competitive balance because the BCS could instead simply evenly distribute
any revenues earned individually by competing bowl games. Therefore, it
is difficult to imagine a sufficiently compelling pro-competitive argument
that would justify the collective sale of television broadcast rights under the
Sherman Act.
Lastly, for a prospective plaintiff an added benefit of a price fixing
claim under either theory is that it bypasses the BCS’s strongest defense to a
group boycott claim, namely a lack of the requisite harm to consumer
welfare necessary to state a valid antitrust claim.269 While the strength of
the consumer welfare argument is questionable in the group boycott
context,270 there should be little doubt that consumer welfare is harmed by
both of the BCS’s price fixing restraints. As noted above, the BCS’s price
fixing agreements ultimately result in higher costs being passed on to
consumers in the form of increased ticket prices and television fees.271
Indeed, the initial BCS television contract resulted in an increase of
approximately two and a half times the previous annual rate paid for the
broadcast rights to the same four bowl games.272 While some of this
escalation can undoubtedly be attributed to increased desirability resulting
from the fact that each of the BCS games was slated to host a national
championship matchup, at least some of it was also almost certainly due to
the elimination of competition between the Fiesta, Orange, and Sugar
Bowls. Because these increased fees are ultimately passed on to the
consumer, a consumer welfare defense by the BCS would thus be without
merit in response to a price fixing claim.
Accordingly, should a prospective plaintiff challenging the BCS assert
a price fixing claim against the system—whether premised on the uniform
bowl payouts or the collective sale of broadcast rights—such a claim would
seem to have a strong possibility of success.
C.The BCS as an Illegal Tying Arrangement
Finally, given the collective sale of the broadcast rights for the Fiesta,
Orange, and Sugar Bowls, a prospective plaintiff challenging the BCS may
seek to assert that the system constitutes an illegal tying agreement. As
noted above, a tying agreement violates Section One of the Sherman Act
when four elements are present: (i) two or more separate products are
269
270
271
272
See Roberts Congressional Statement, supra note 204 (noting same).
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grouped together, (ii) the seller conditions the sale of one product on the
sale of the other product, (iii) the seller has sufficient economic power to
force purchasers to buy the tied products, and (iv) the seller actually coerces
the buyer to purchase all of the tied products.273
A tying claim against the BCS would most likely be asserted by a
television network that attempted to purchase the broadcasting rights for
one of the BCS bowl games. Such a plaintiff should easily be able to
establish the first element—the grouping of multiple separate products—
given the collective sale of the broadcast rights for the Fiesta, Sugar, and
Orange Bowls, along with the rights to the BCS National Championship
Game for the years in which it is hosted by one of the three aforementioned
bowls.274 Arguing that these games do not constitute separate products will
be extremely difficult for the BCS, as prior to the formation of the BCS
these bowls independently marketed their own broadcasting rights to
networks.
A plaintiff should also be able to establish the second element of a
tying claim, as the purchase of the broadcasting rights for any of the Fiesta,
Orange, and Sugar Bowls, along with the BCS National Championship
Game, appears to be contingent on purchasing the rights for the other games
as well.275 The BCS could argue that the sale of broadcast rights for any
one game does not hinge on purchasing the other games, perhaps pointing
to the example of the Rose Bowl, which individually markets its
broadcasting rights to ABC.276 However, because the broadcasting rights
for the standalone BCS National Championship Game are packaged along
with the rights to broadcast the corresponding BCS bowl game held in the
same city in a particular year,277 at a minimum a plaintiff would likely be
able to establish that the purchase of broadcasting rights for the
championship game are conditioned on acquiring the rights to a second
BCS game.
Similarly, a court would likely find the third element of a tying claim to
be satisfied as well, as the BCS’s control over the national championship
game and other marquee bowl match-ups gives it significant economic
power in the market for the broadcast rights for the most desirable post273
See Leslie, supra note 113, at 185051. See also Feldman, supra note 114, at 57778
(discussing tying agreements generally).
274
See ESPN, BCS Agree to Four-year Deal for Television, Radio, Digital Rights, supra
note 130 (noting that although ESPN purchased the rights to broadcast the Fiesta, Orange,
and Sugar Bowls from 2011–2014, it only acquired the rights to the BCS National
Championship Game from 2011–2013, the years in which one of the aforementioned bowls
will host the title game).
275
See id.
276
See id.
277
See id.
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season college football games. Indeed, the economic power wielded by the
BCS became apparent soon after its formation, when the BCS successfully
increased television revenues by sixty percent in the first year of its initial
television contract with ABC.278
Although a prospective plaintiff should thus be able to establish the
first three elements of a tying claim against the BCS, satisfying the fourth
factor would likely prove more difficult. Specifically, in establishing actual
coercion, courts typically require that a plaintiff prove it was an “unwilling
purchaser” of one of the tied products.279 In other words, a prospective
plaintiff would need to prove that it was forced to buy the broadcast rights
to at least one BCS game it did not wish to purchase in order to obtain the
rights for the game(s) it wanted to broadcast. While it is possible that a
television network would only be interested in acquiring the broadcast
rights to a certain BCS game, in most cases a network interested in
purchasing the rights to one BCS game would usually want the rights to the
other games as well. Indeed, given that BCS bowl games consistently draw
strong television ratings,280 every BCS game would seem to have at least
some appeal to most networks.
Therefore, it will be difficult for a television network to prove that it
was actually an “unwilling purchaser” of any BCS game. Instead, a court
would likely find that the network was simply more interested in purchasing
the rights to some games than others, an insufficient level of coercion under
the existing case law.281 Accordingly, the chances of success for a tying
claim against the BCS do not appear to be as strong as for a group boycott
or price fixing claim.
V. CONCLUSION
This Article has considered the continued viability of an antitrust action
against the Bowl Championship Series, the system through which
participation in college football’s national championship game and other
most prestigious post-season bowl games is determined. Although an
overwhelming majority of academic commentators have concluded that the
BCS alleviated most antitrust concerns through its 2004 revised selection
procedures, this Article has instead argued that the BCS remains susceptible
to antitrust attack on several grounds. First, opponents of the BCS can
278
See, e.g., Trans Sport, 964 F.2d at 192.
280
T.V. Ratings, supra note 210.
281
See, e.g., Six W. Retail Acquisition, 2004 U.S. Dist. Lexis 5411, at *22 (holding that
having to buy a product that one “does not ‘want as much’” as the tied product is not
enough).
279
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argue that the system continues to maintain a group boycott insofar as it
inequitably distributes revenue, preventing the non-BCS Conferences from
realizing the full benefits of BCS participation. Second, the BCS can also
be attacked as an illegal price fixing scheme due to the fact that it enables
formerly independent, competing conferences and bowl games to establish
a common pay scale for participation in all BCS bowl games, and
eliminates any pricing competition between certain BCS bowl games for the
sale of their broadcast rights. Finally, however, a tying claim based on the
collective marketing of BCS television broadcast rights appears less
promising.
Although the outcome of any case under Section One of the Sherman
Act is difficult to predict, this Article contends that the BCS would struggle
to defend itself against a group boycott or price fixing claim under the rule
of reason, because its alleged procompetitive benefits could similarly be
obtained via less restrictive alternatives. Accordingly, this Article concludes
that the BCS remains quite vulnerable to an antitrust challenge, should the
political process fail to address the inequalities of the BCS.
2/7/2011 9:49 AM
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Caught in the Copyright Rye: Freeing First
Amendment Interests from the Constraints of the
Traditional View
Arlen W. Langvardt* & Tara E. Langvardt†
ABSTRACT
Courts traditionally have taken the position that there is no need to
make any special allowance for the First Amendment interests of
defendants in copyright infringement cases because the distinction in
copyright law between ideas and expression and the fair use doctrine
supposedly act as suitable built-in safeguards of free speech. However, the
distinction between ideas and expression does not amount to a meaningful
First Amendment protector, and the fair use doctrine is only partially
satisfactory in that regard. Using as a starting point the recent litigation
involving J.D. Salinger and an author whose novel commented on Salinger
and the famous writer’s best-known work (The Catcher in the Rye), we
explore broader questions associated with the uneasy relationship between
copyright law and the First Amendment. We offer factor-by-factor
recommendations for making the fair use analysis more protective of First
Amendment interests, so that the fair use doctrine can become the free
speech safeguard that courts’ traditional view has long represented it to be.
In addition, we provide free-speech-sensitive recommendations regarding
remedies issues that arise when a copyright infringement defendant’s fair
use defense is plausible but not sufficient to prevent liability.
*
Professor of Business Law and Eveleigh Professor of Business Ethics Kelley School of
Business, Indiana University.
†
J.D. 2011(expected), University of Chicago Law School.
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TABLE OF CONTENTS
I. INTRODUCTION ............................................................................ 100
II. COPYRIGHT PROTECTION, INFRINGEMENT, AND FAIR
USE: AN OVERVIEW.................................................................. 103
A. Copyright Protection Basics ............................................................. 103
B. Copyright Infringement and the Fair Use Defense ........................... 104
C. Copyright and the First Amendment? ............................................... 109
III. SALINGER V. COLTING: THE DISTRICT COURT AND
SECOND CIRCUIT DECISIONS ............................................... 110
A. The District Court Decision .............................................................. 110
B. The Second Circuit Decision............................................................. 115
IV. COPYRIGHT AND THE FIRST AMENDMENT:
INADEQUACIES OF THE TRADITIONAL VIEW ................. 118
A. The Distinction Between Ideas and Expression: Limited Value as First
Amendment Safeguard ...................................................................... 118
B. The Fair Use Doctrine: Not Always Reliable as First Amendment
Safeguard .......................................................................................... 123
1. Shortcomings in First Factor Analysis .......................................... 123
2. Shortcomings in Second, Third, and Fourth Factor Analyses ...... 130
3. The First Amendment Implications of Copyright Duration
Extensions ..................................................................................... 134
V. BRINGING FAIR USE ANALYSIS MORE IN LINE WITH THE
FIRST AMENDMENT ................................................................. 139
A. A First Amendment-Sensitive Factor One......................................... 141
B. A First Amendment-Sensitive Factor Two ........................................ 148
C. A First Amendment-Sensitive Factor Three ...................................... 149
D. A First Amendment-Sensitive Factor Four ...................................... 151
E. Remedies When the Fair Use Defense Fails or Is Likely to Fail ...... 152
VI. CONCLUSION ................................................................................. 155
I.INTRODUCTION
Perhaps Fredrik Colting should have known better. Did he
underestimate the likelihood that J.D. Salinger, the reclusive author of The
Catcher in the Rye,1 would sue him for copyright infringement after he
wrote a novel that drew upon Catcher through heavy use of Salinger’s
iconic Holden Caulfield character?2 Given Salinger’s previously
1
J.D. SALINGER, THE CATCHER IN THE RYE (1951).
Salinger v. Colting, 641 F. Supp. 2d 250 (S.D.N.Y. 2009), vacated, 607 F.3d 68 (2d Cir.
2010).
2
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101
demonstrated inclination to initiate infringement litigation,3 Colting was
naïve if he thought a lawsuit would not result. On the other hand, perhaps
Colting expected litigation but considered it a chance for notoriety and an
opportunity for vindication of his intended defense: fair use.4
Either way—naïvely, or opportunistically—Colting became a
defendant.5 In asserting the fair use defense, Colting no doubt learned what
copyright infringement defendants frequently find out: hinging one’s fate on
the fair use defense involves considerable difficulty and uncertainty.
Courts’ fair use determinations require a painstaking factor-based analysis
whose outcome proves difficult to predict.6 Little about the fair use doctrine
is black and white; it exists largely in shades of gray.
In 60 Years Later: Coming Through the Rye,7 Colting borrowed the
Caulfield character but made him six decades older than Catcher’s teenaged
Holden.8 Salinger sought a preliminary injunction to prevent publication
and distribution of Colting’s novel.9 A federal district court obliged,
rejecting the defendant’s fair use argument.10 The U.S. Court of Appeals for
the Second Circuit upheld the district court’s resolution of the fair use
issues.11 However, the Second Circuit vacated the preliminary injunction
and remanded for further proceedings because the district court had not
taken into account injunctive relief standards contemplated in a Supreme
Court decision that the Second Circuit deemed applicable.12 The factual
context of Salinger v. Colting and the conclusions of the district court and
the Second Circuit make the case a useful starting point for examination of
broader questions concerning the fair use defense and the role First
3
See Salinger v. Random House, Inc., 811 F.2d 90 (2d Cir. 1987) (holding that biographer
who borrowed from Salinger’s unpublished letters engaged in copyright infringement).
4
Salinger, 641 F. Supp. 2d at 254–55. See 17 U.S.C. § 107 (2006).
5
Salinger, 641 F. Supp. 2d at 253–54. The firms slated to publish and distribute Colting’s
novel were also sued. Id.
6
See, e.g., Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577–78 (1994) (noting caseby-case, factor-based nature of fair use analysis). See also 17 U.S.C. § 107 (listing fair use
factors courts must apply).
7
JOHN DAVID CALIFORNIA, 60 YEARS LATER: COMING THROUGH THE RYE (2009)
[hereinafter 60 YEARS]. Fredrik Colting is the author’s given name. He used John David
California as a pen name. Salinger, 641 F. Supp. 2d at 253.
8
See Salinger, 641 F. Supp. 2d at 258.
9
Id. at 254.
10
Id. at 268–69. The sweeping preliminary injunction barred the defendants from
“manufacturing, publishing, distributing, shipping, advertising, promoting, selling, or
otherwise disseminating any copy of 60 Years or any portion thereof, in or to the United
States.” Id. at 269.
11
Salinger v. Colting, 607 F.3d 68, 83 (2d Cir. 2010).
12
Id. at 77–83. The Supreme Court decision was a patent case. eBay, Inc. v.
MercExchange, L.L.C., 547 U.S. 388 (2006).
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Amendment considerations should play in copyright infringement litigation.
This article focuses on those broader questions.
Section II introduces basic copyright principles and provides
background on the fair use defense. Section III summarizes the district court
and Second Circuit decisions in Salinger v. Colting. Besides analyzing the
decisions, Section IV considers broader questions stemming from Salinger
and other cases presenting fair use issues. As later analysis will show, it is
necessary to reassess the Supreme Court’s view that the distinction between
ideas and expression and the fair use doctrine adequately address First
Amendment concerns in copyright cases.13 This need is especially
pronounced because of the vast duration of copyrights, thanks to lengthy
extensions enacted by Congress.14 We contend in Section IV that given how
First Amendment principles are applied outside the copyright setting, the
traditional view of the relationship between the fair use doctrine and the
First Amendment sometimes provides an empty promise of free speech
protection.
Section V proposes specific modifications of the four-factor fair use
analysis in an effort to enable the fair use doctrine to realize its potential for
safeguarding First Amendment interests. We call for altering current
handling of profit-motivated uses of others’ copyrighted works,15 so that
certain such uses are evaluated more consistently with First Amendment
principles as applied outside the copyright context. We then offer
recommendations for making the second and third fair use factors (nature of
the copyrighted work and amount and substantiality of what the user
borrowed16) more sensitive to First Amendment concerns.
Regarding the effect on potential markets for the copyrighted work,17
Section V stresses the importance of remembering that fair use is a case-bycase, fact-specific inquiry. When courts attempt to balance copyright
owners’ economic interests against the expressive interests of copyrighted
works’ users, resorting too quickly to general assumptions regarding
potential market effect poses a danger that defendants’ free speech interests
will not be adequately addressed. A hard look at the facts is especially
important in cases such as Salinger, where the copyright owner has no
intention of licensing his work18 and is inappropriately seeking moral rights
13
See, e.g., Eldred v. Ashcroft, 537 U.S. 186, 219–21 (2003).
See 17 U.S.C. §§ 302, 304 (2006).
15
See Campbell , 510 U.S. at 584–85 (1994). We also urge the elimination of a Campbellsuggested distinction between parody and satire. See id. at 579–83.
16
17 U.S.C. § 107 (2006).
17
Id.
18
14
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103
over it.19
Finally, Section V considers free speech interests that may be present
even when fair use arguments fail and the court concludes that copyright
infringement occurred or is likely to have occurred. Because remedies
issues may trigger First Amendment concerns, we advocate careful judicial
attention to whether injunctive relief (preliminary or permanent) is
necessary in the case at hand, instead of resorting to an injunction as a
matter of course.20 We also offer suggestions regarding damages
determinations in cases in which free speech interests are significant but do
not prevent the imposition of infringement liability.
II.COPYRIGHT PROTECTION, INFRINGEMENT, AND FAIR
USE: AN OVERVIEW
A. Copyright Protection Basics
Congressional authority to enact copyright laws resides in Article I, § 8
of the United States Constitution, which states that Congress “shall have
Power . . . To promote the Progress of Science and useful Arts, by securing
for limited Times to Authors and Inventors the exclusive Right to their
respective Writings and Discoveries.”21 The purpose of this limited property
right is to “motivate the creative activity of authors” in order to benefit the
public with creative works.22 The limited scope and duration of the
copyright holder’s entitlement “reflect[] a balance of competing claims
upon the public interest: creative work is to be encouraged and rewarded,
but private motivation must ultimately serve the cause of promoting broad
public availability of literature, music, and the other arts.”23
A work that demonstrates a modicum of originality and is fixed in a
“tangible medium of expression”24 gains protection for its expression of an
idea but not for the idea itself nor for any factual material contained within
the work.25 Fictional characters may also be separately protected by
19
See id. Moral rights apply only as to a narrow range of works of visual art, not to
copyrighted works generally. See 17 U.S.C. §§ 101, 106A (2006).
20
In that portion of Section V, we express agreement with the injunctive relief approach
taken by the Second Circuit in Salinger, 607 F.3d at 79–82, even though we disagree with
that court’s—and the district court’s—resolution of the fair use issues. Id. at 83; 641 F.
Supp. 2d at 256–68.
21
U.S. CONST. art. I, § 8, cl. 8.
22
Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 429 (1984).
23
Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975).
24
17 U.S.C. § 102(a) (2006); Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345
(1991).
25
17 U.S.C. § 102(b) (2006); Feist, 499 U.S. at 344–45, 363.
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copyright if they satisfy certain legal tests.26 There is little doubt that both
Catcher in the Rye and the character of Holden Caulfield are protectable
under copyright law.27 But that fact does not end the inquiry. Proper
consideration of fair use and First Amendment principles leads to the
conclusion that copyright owners’ otherwise legitimate rights over their
creations must sometimes give way to the rights of users and of the public.28
B.Copyright Infringement and the Fair Use Defense
As a general rule, a copyright owner has the exclusive right to
reproduce her work, prepare derivative works based on it, distribute copies
of it, display it, and perform it publicly.29 Copyright protection exists at the
moment a work is created and fixed in a tangible medium.30 For works
created on or after January 1, 1978, the copyright generally endures for the
life of the author plus 70 years after her death.31 For still-copyrighted works
created before January 1, 1978, the copyright term endures for 95 years
from the date copyright was originally secured.32
Violation of any of the exclusive rights of a copyright owner infringes
the author’s copyright.33 Not all uses of a copyright owner’s work are
unlawful infringements, however. The fair use defense places limitations on
the exclusive rights of copyright owners.34 This defense emerged to
“permit[] courts to avoid rigid application of the copyright statute when, on
26
Kathryn M. Foley, Protecting Fictional Characters: Defining the Elusive TrademarkCopyright Divide, 41 CONN. L. REV. 921, 925–26, 927, 930–31 (2009). See Nichols v.
Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930) (setting forth distinct delineation
test); Warner Bros. Pictures v. Columbia Broad. Sys., 216 F.2d 945, 948–50 (9th Cir. 1954)
(setting forth story being told test).
27
The fully developed Caulfield character is central to Catcher and thus likely merits
protection under the tests identified in note 26. See Salinger, 641 F. Supp. 2d at 254, 259–
60, 261–62, 263–64. Of course, even if the character were not entitled to copyright
protection in its own right, it would still be part of the protected expression in Catcher. See
17 U.S.C. §§ 102(a),(b) (2006).
28
See infra text accompanying notes 171–235.
29
17 U.S.C. § 106 (2006). The display and performance rights apply only in regard to
certain copyrighted works. See id.
30
Id. §§ 102, 201, 302.
31
Id. § 302(a). A different duration rule applies to works made for hire, see id. § 302(c),
but that rule is not germane to the issues addressed here.
32
Id. § 304. Copyrights run until the end of the calendar year in which they otherwise
would expire. Id. § 305.
33
§ 501. In order to establish that infringement occurred, the copyright owner must prove
that the defendant’s actions involved copying and improper appropriation—elements
addressed alongside the question whether the copyright[] owner’s exclusive rights were
violated. See, e.g., Arnstein v. Porter, 154 F.2d 464, 468, 473 (2d Cir. 1946).
34
See 17 U.S.C. § 107 (2006).
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105
occasion, it would stifle the very creativity which that law is designed to
foster.”35 The relevant statutory provision singles out uses reflecting
“purposes such as criticism, comment, news reporting, [and] teaching . . . ,
scholarship, or research” as potentially strong candidates for fair use
treatment.36 Yet such a purpose does not guarantee fair use status, as
Congress has provided that “[i]n determining whether the use made of a
work in any particular case is a fair use,” certain factors must be
considered.37 Those factors include:
(1) The purpose and character of the use, including whether such use
is of a commercial nature or is for nonprofit educational purposes;
(2) The nature of the copyrighted work;
(3) The amount and substantiality of the portion used in relation to
the copyrighted work as a whole; and
(4) The effect of the use upon the potential market for or value of the
copyrighted work.38
Campbell v. Acuff-Rose Music, Inc.39 provides a useful illustration of
what may constitute fair use and of how the fair use factors operate. In that
case, members of the musical group 2 Live Crew had written and recorded a
parody of the rock ballad “Oh, Pretty Woman.” Acuff-Rose, the song’s
copyright owner, sued the group for recording the parody version and
selling it despite Acuff-Rose’s denial of permission to borrow from “Oh,
Pretty Woman.”40
The Supreme Court concluded in Campbell that parody may qualify for
fair use treatment because parody, “[l]ike less ostensibly humorous forms of
criticism, . . . can provide social benefit, by shedding light on an earlier
work, and, in the process, creating a new one.”41 However, the Court
emphasized that a parodic purpose does not make the use “presumptively
35
Stewart v. Abend, 495 U.S. 207, 236 (1990) (internal quotation marks and citation
omitted). “The ultimate test of fair use . . . is whether the copyright law’s goal of promoting
the Progress of Science and useful Arts would be better served by allowing the use than by
preventing it.” Castle Rock Entm’t, Inc. v. Carol Publ’g Group, 150 F.3d 132, 141 (2d Cir.
1998) (internal quotation marks and citation omitted).
36
17 U.S.C. § 107 (2006).
37
Id.
38
Id. Congress included this statement after the list of factors: “The fact that a work is
unpublished shall not itself bar a finding of fair use if such finding is made upon
consideration of all the above factors.” Id.
39
510 U.S. 569 (1994). We discuss Campbell here to furnish a foundation for later analysis
of the decision, both as it relates to Salinger and as it pertains to the broader questions
examined in later sections.
40
Id. at 572–73.
41
Id. at 579.
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fair.”42 The true test is whether the parodist has taken so much, and altered
the content of the original so little, that the new work supersedes the
original.43
In reviewing the U.S. Court of Appeals for the Sixth Circuit’s rejection
of 2 Live Crew’s fair use defense, the Supreme Court emphasized the lower
court’s error in giving essentially conclusive effect to the fact that the
defendants had profited financially.44 The Court stated that the first fair use
factor, the purpose and character of the use,45 focuses on determining
“whether the new work merely supersede[s] the objects of the original
creation . . . or instead adds something new, with a further purpose or
different character, altering the first with new expression, meaning, or
message; it asks, in other words, whether and to what extent the new work
is transformative.”46 The Court noted that the more transformative the use,
the less important other considerations such as commercialism will be.47
Accordingly, the Court’s first factor analysis indicated that the commercial
nature of an alleged infringer’s action is simply a “fact to be weighed along
with others in fair use decisions.”48
The Court observed that parody may merit fair use treatment because,
as commentary, it fits within a category singled out by Congress.49
However, the Court cautioned that if “the commentary has no critical
bearing on the substance or style of the original composition, . . . the claim
to fairness in borrowing from another’s work diminishes accordingly (if it
does not vanish), and other factors, like the extent of its commerciality,
loom larger.”50 The Court was thus emphasizing that to be eligible for fair
use treatment, the parody must comment on the underlying copyrighted
work.51
42
Id. at 581. Rather, “parody, like any other use, has to work its way through the [four fair
use] factors, and be judged case by case.” Id.
43
Id. See id. at 583 n.16.
44
Id. at 575, 583–85.
45
17 U.S.C. § 107 (2006).
46
Campbell, 510 U.S. at 579 (internal quotation marks and citation omitted). Parody, the
Court observed, will often have a strong claim to being transformative. Id.
47
Id. The Court emphasized that whether a use was commercial is only a part of the inquiry
under factor one, which contemplates that the significance of a defendant’s profit-making
motivation will vary from case to case. Id. at 572, 584.
48
Id. at 585 (internal quotation marks and citation omitted).
49
Id. at 579. See 17 U.S.C. § 107 (2006).
50
Campbell, 510 U.S. at 580.
51
See id. The parody in Campbell met that threshold requirement. Id. at 582–83. In the
same discussion, the Court suggested a distinction between parody, which it regarded as a
potentially strong candidate for fair use protection, and satire, which it appeared to classify
as a weaker fair use candidate. See id. at 580–81.
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107
In applying the second fair use factor, the nature of the copyrighted
work,52 the Court noted that creative expression is “closer to the core of
intended copyright protection” than factual works are. The Court therefore
observed that it may be more difficult to establish a fair use defense when
fictional works are copied.53 However, the Court emphasized that the highly
creative nature of copyrighted fictional works may not “help much in
separating the fair use sheep from the infringing goats in a parody case,
since parodies almost invariably copy publicly known, expressive works.”54
The Court stated that the third factor, the amount and substantiality of
the portion used in relation to the copyrighted work as a whole,55 requires
consideration of not only the quantity of the original work used but also the
qualitative importance of the borrowed material.56 Noting the interplay
between this factor and the fourth factor, the Court observed that “a work
composed primarily of an original, particularly its heart, with little added or
changed, is more likely to be a merely superseding use, fulfilling demand
for the original.”57 The Court acknowledged that a parodist must be
permitted to “conjure up” enough of the original work to enable her
audience to recognize the parody’s target, but asserted that how much more
can reasonably be taken depends on “the extent to which the song’s
overriding purpose and character is to parody the original or, in contrast, . . .
serve as a market substitute for [it].”58
Applying these principles to the case, the Court disapproved of the
Sixth Circuit’s conclusion that the defendants had borrowed unreasonably
from “Oh, Pretty Woman.”59 Their copying of its “characteristic opening
bass riff” and some of its lyrics may have invoked the “heart” of the song,60
but “the heart is also what most readily conjures up the [copyrighted work]
for parody, and it is the heart at which parody takes aim.”61 Continuing to
emphasize how the third factor may be applied differently in parody cases
than in non-parody cases, the Court stated that “[c]opying does not become
excessive in relation to parodic purpose merely because the portion taken
was the original’s heart. If 2 Live Crew had copied a significantly less
memorable part of the original, it is difficult to see how its parodic character
52
17 U.S.C. § 107 (2006).
54
Id.
55
17 U.S.C. § 107 (2006).
56
57
Id. at 587–88.
58
Id. at 588.
59
Id.
60
Id.
61
Id.
53
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would have come through.”62 The Court also stressed that the defendants
had not simply copied from “Oh, Pretty Woman.” Besides borrowing
expression from the original, they contributed considerable musical and
lyrical expression of their own creation.63
Next, the Court commented further on the fourth factor, the effect of
the use upon the potential market for or value of the copyrighted work.64
This inquiry requires courts to consider not only the potential market harm
from the alleged infringer’s actions, but also whether widespread similar
conduct would negatively affect the copyright owner’s ability to market the
work.65 Noting the Sixth Circuit’s error in presuming future harm because
of the parody’s commercial nature, the Court stated that where the new
work is transformative, market substitution is less likely and therefore
cannot be inferred.66
The fourth factor also contemplates consideration of whether the
defendant’s actions would be likely to harm logical markets for derivative
works.67 The relevant derivative markets include “only those [uses] that
creators of original works would in general develop or license others to
develop.”68 As the Campbell Court noted, “there is no protectible derivative
market for criticism [because] the unlikelihood that creators of imaginative
works will license critical reviews or lampoons of their own productions
removes such uses from the very notion of a potential licensing market.”69
The defendants could not be treated as having harmed a potential market for
“Oh, Pretty Woman” parodies because no such market would be logical for
62
Id. at 588–89. The Court’s references to the “heart” of a work were an attempt to
distinguish Campbell’s parody scenario from the non-parody use in Harper & Row,
Publishers, Inc. v. Nation Enters., 471 U.S. 539 (1985). See Campbell, 510 U.S. at 587–89.
In Harper & Row, the defendant’s borrowing of the supposed heart of the unpublished
memoirs of President Ford was among the reasons why the Court held that the defendant
did not merit fair use protection. Harper & Row, 471 U.S. at 564–66.
63
64
17 U.S.C. § 107 (2006).
65
66
Id. at 591. The Court indicated that in view of the “different market functions” served by
the original copyrighted work and the parody version, it is “likely that the [parody] will not
affect the market for the original in a way cognizable under [the fourth fair use] factor.” Id.
67
Id. at 590, 592–93.
68
Id. at 592.
69
Id. The Court also stressed that if harm to the copyrighted work’s economic value stems
from the force and effectiveness of the defendant’s parody or other commentary, that harm
does not count against the defendant in the fair use analysis. The Court stated that “when a
lethal parody, like a scathing theater review, kills demand for the original, it does not
produce a harm cognizable under the Copyright Act.” Id. The task for courts is to
“distinguish between biting criticism [that merely] suppresses demand [and] copyright
infringement[, which] usurps it.” Id. (internal quotation marks and citation omitted).
2/7/2011 9:49 AM
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109
fourth factor purposes.70
C.Copyright and the First Amendment?
Courts tend not to address First Amendment concerns in any
meaningful depth in copyright cases, reasoning that copyright law itself
adequately protects free speech interests.71 The Supreme Court explained
the rationale for this tendency in Eldred v. Ashcroft,72 in which the Court
rejected a claim that the Copyright Term Extension Act of 1998 violates the
First Amendment.73 The Court reasoned that copyright law contains free
speech safeguards because it protects only an author’s expression and
allows others to make unrestricted use of ideas, facts, and theories.74 It also
labeled the fair use defense as a further speech safeguard because it permits
use of the author’s copyrighted expression in certain circumstances.75
Finally, the Court noted that the primary goal of the First Amendment is to
protect one’s freedom to make her own speech and that it “bears less
heavily when speakers assert the right to make other people’s speeches.”76
With this understanding of the relationship between copyright and the
First Amendment, we now examine Salinger v. Colting.77 In the following
section, we discuss the district court’s decision and the decision rendered on
appeal.
70
Id. Yet there was a relevant potential market that 2 Live Crew could have impaired: the
market for rap versions of “Oh, Pretty Woman.” Because the evidentiary record did not
provide a basis for making such a determination, the Court remanded for further
consideration of that issue. Id. at 592–94.
71
See, e.g., Eldred, 537 U.S. at 218–21 (2003). See also Suntrust Bank, 268 F.3d at 1264–
65 (recognizing this tendency but noting that fair use analysis must be conducted with
awareness of First Amendment interests).
72
537 U.S. 186.
73
Id. at 218–21.
74
Eldred, 537 U.S. at 219. A 1970 article by Professor Nimmer was influential in
establishing the notion that the expression versus ideas distinction serves as a First
Amendment safeguard. Melville B. Nimmer, Does Copyright Abridge the First Amendment
Guarantees of Free Speech and Press?, 17 UCLA L. REV. 1180, 1180–81, 1190–92
(1970). See Neil Weinstock Netanel, Locating Copyright Within the First Amendment
Skein, 54 STAN. L. REV. 1, 8, 11–12 (2001) (noting influential nature of Nimmer article).
75
Eldred, 537 U.S. at 219–20. Courts regularly make such an observation about the fair use
doctrine. Rebecca Tushnet, Copy this Essay: How Fair Use Doctrine Harms Free Speech
and How Copying Serves It, 114 YALE L.J. 535, 548 (2004). The relevant assumption is
that the fair use doctrine serves the same sorts of interests underlying the First Amendment.
Robert C. Denicola, Copyright and Free Speech: Constitutional Limitations on the
Protection of Expression, 67 CAL. L. REV. 283, 297 (1979).
76
Eldred, 537 U.S. at 221. Later, we examine Eldred’s handling of the First Amendment
arguments made in the case. See infra text accompanying notes 156–159.
77
641 F. Supp. 2d 250 (S.D.N.Y. 2009), vacated, 607 F.3d 68 (2d Cir. 2010).
110
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III.SALINGER V. COLTING: THE DISTRICT COURT AND
SECOND CIRCUIT DECISIONS
A.The District Court Decision
J.D. Salinger, author of the classic novel The Catcher in the Rye,78
brought suit in the U.S. District Court for the Southern District of New
York against Fredrik Colting and companies slated to be involved in
publication and distribution of a novel written by Colting.79 Salinger alleged
that Colting’s novel, 60 Years Later: Coming Through the Rye80
(hereinafter, 60 Years), was an unauthorized derivative work of Catcher and
that the use of Mr. C, the main character in 60 Years, infringed Salinger’s
copyrights in Catcher and the Holden Caulfield character because Colting
simply aged Caulfield sixty years and gave him a new name.81 Salinger
sought a preliminary injunction barring the defendants from publishing,
advertising, or disseminating 60 Years in the United States.82
The district court determined that Salinger was likely to succeed on the
merits of his infringement claim.83 It then addressed Colting’s contention
that 60 Years and the Mr. C character constituted fair use of Salinger’s
copyrighted material. The court explained the first fair use factor (purpose
and character of the use) as “whether the new work merely supersede[s] the
objects of the original creation . . . or instead adds something new, with a
further purpose or different character, altering the first with new expression,
meaning, or message; it asks, in other words, whether and to what extent the
new work is ‘transformative.’”84 Next, the court considered whether 60
Years was a parody, since “parody has an obvious claim to transformative
value.”85 According to Colting, 60 Years was a parody that commented
directly on both Catcher and Salinger.86 However, the court noted that for a
parody to be eligible for fair use treatment, its “parodic character [must]
78
SALINGER, supra note 1.
Salinger, 641 F. Supp. 2d at 253. Except where the context requires reference to the
defendants in the plural, we will use “Colting” to refer collectively to the defendants.
80
60 YEARS, supra note 7.
81
Salinger, 641 F. Supp. 2d at 253–54, 262.
82
Id. at 254. As will be seen, the district court granted the preliminary injunction. Id. at
268–69. However, the Second Circuit vacated the preliminary injunction and remanded the
case because the preliminary injunction standard applied by the district court had not taken
into account a relevant Supreme Court decision. 607 F.3d at 77–80, 83–84. For further
discussion of the Second Circuit’s decision, see infra text accompanying notes 119–138.
83
Salinger, 641 F. Supp. 2d at 254.
84
Id. at 256 (quoting Campbell, 510 U.S. at 579). See 17 U.S.C. § 107 (2006).
85
Salinger, 641 F. Supp. 2d at 256 (quoting Campbell, 510 U.S. at 579).
86
Id. at 257.
79
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111
reasonably be perceived.”87 It then concluded that for fair use purposes, a
parody’s only relevant aspects are those that comment on the original work
itself, as opposed to the work’s author.88
Rejecting Colting’s contention that 60 Years commented meaningfully
on Catcher and the Holden Caulfield character, the court concluded that 60
Years included the same observations and reflections communicated by
Caulfield in Salinger’s work—except that they were now communicated by
an older Caulfield.89 The court observed that the “key themes” were
“already apparent” in Catcher and that “[i]t is hardly parodic to repeat th[e]
same exercise in contrast, just because society and the characters have
aged.”90 In concluding that 60 Years could not reasonably be perceived as a
parody directed at Catcher or Caulfield,91 the court opined that the true
purpose of 60 Years was to satisfy Salinger’s readers’ appetite for the
Caulfield character.92
Colting asserted that he engaged in commentary on Salinger by making
Salinger himself a character in 60 Years.93 The court rejected this argument
because parody is confined to new works that comment directly on the
original work and noted that using Salinger as a character was simply a
vehicle for Colting to comment on Salinger rather than on Catcher or the
Caulfield character.94
87
Id. (quoting Campbell, 510 U.S. at 582).
Id. In reaching this conclusion, the court relied on Campbell and noted Campbell’s
suggested distinction, for fair use purposes, between parody and satire. Id. at 256–57. See
Campbell, 510 U.S. at 580–81.
89
90
Id. at 259. The court’s reference to “key themes of Catcher,” id. and a later reference to
Colting’s having borrowed “one of the critical extant themes of Catcher,” id. at 260, may
indicate that the court was overextending Salinger’s copyright protection. A work’s themes
would ordinarily be treated as ideas for purposes of copyright law’s distinction between
protected expression and unprotected ideas. See 17 U.S.C. § 102(b) (2006). The court’s
focus on theme-borrowing thus suggests that the court was penalizing Colting in the fair
use analysis even though themes are unprotected matter that he should have been free to
utilize without having to rely on the fair use defense. For further discussion of the
expression versus ideas distinction, see infra text accompanying notes 141–168.
91
Id. at 258, 260. Colting’s contentions were, in the court’s assessment, “post-hoc
rationalizations employed through vague generalizations about the alleged naivete of the
original, rather than reasonably perceivable parody.” Id. at 258. In addition, the court
doubted Colting’s credibility. It noted that not until Salinger filed his lawsuit did Colting
call 60 Years a parody of Catcher or the Caulfield character. For the court, it was
significant that the original book jacket for 60 Years called it a “sequel to one of our most
beloved classics” and that in pre-litigation interviews, Colting referred to his novel as a
“tribute” to Catcher and its author. Id. at 260 n.3.
92
Id. at 260 (quoting Castle Rock Entm’t, Inc., 150 F.3d at 143).
93
Id. at 260–63.
94
Id. at 260–61. The court conceded that using Salinger as a character was “indeed novel,”
88
112
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After concluding that 60 Years was not eligible for fair use protection
as a parody, the court considered whether Colting’s novel was otherwise a
transformative use of Catcher and Caulfield. The court again noted that in
aging Caulfield sixty years and simply accentuating Caulfield’s unique
characteristics, 60 Years does not “‘add[ ] something new, with a further
purpose or different character, altering the first with new expression,
meaning, or message.’”95 The court conceded that Colting’s use of Salinger
as a character in order to criticize the famous author’s behavior and
reclusive nature was somewhat transformative.96 However, it doubted the
credibility of Colting’s assertions that the primary purpose of 60 Years was
to criticize Salinger, given Colting’s previous statements that 60 Years was
to be a Catcher sequel.97 In addition, the court pointed out that the
transformative value of using Salinger as a character was diminished for
two key reasons: the Salinger character appeared on only forty pages of the
nearly 300-page novel, and the ratio of what was borrowed from Catcher to
what was new in 60 Years was quite high.98
Concluding its application of the first fair use factor, the court stated
that the commercial nature of Colting’s novel further weighed against a
finding of fair use.99 The court confined its discussion of the commercial
purpose issue to two sentences that said very little.100 The absence of
discussion in those two sentences, coupled with the earlier discussion of
what was transformative about Colting’s novel, suggested a conclusion by
the court that the novel’s transformative aspects were so insignificant that
they did not offset Colting’s profit motive.
Turning to the second fair use factor (the nature of the copyrighted
work), the court noted the importance of determining whether the
copyrighted work is a work of fact or fiction because of the greater room for
but emphasized that it was “unconvinced by [Colting’s] attempts to shoehorn [the]
commentary and criticism of Salinger into the parodic framework of Campbell, which
requires critique or commentary of the [copyrighted] work.” Id. at 261. See Campbell, 510
U.S. at 580–81. The court identified commentary on Salinger’s “reclusive nature” and
other “supposed idiosyncracies,” including Salinger’s “alleged desire to exercise ‘iron-clad
control over his intellectual property, refusing to allow others to adapt any of his characters
or stories.’” Salinger, 641 F. Supp. 2d at 261. But the court reasoned that “just because an
author and his work are intimately associated does not mean that a critique of one will
necessarily equate to a critique of both.” Id. at 261 n.4.
95
641 F. Supp. 2d at 261 (quoting Campbell, 510 U.S. at 579). See id. at 261–62.
96
Id. at 262. See id. at 261.
97
Id. at 262. See id. at 260 n.3.
98
Id. at 262.
99
Id. at 263.
100
See id. at 263.
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113
a claim of fair use where the original work is largely factual.101 The court
concluded that this factor weighed against a finding of fair use, since
Catcher is a “‘creative expression [that] falls within the core of the
copyright’s protective purposes.’”102
Next, the court examined the third fair use factor, the amount and
substantiality of the portion used in relation to the copyrighted work as a
whole. It asserted that the third factor inquiry focuses on whether the extent
of copying was greater than necessary to promote the purpose of the use.103
The court found that Colting took more from Catcher than was necessary
for the alleged purpose of criticizing Salinger—especially in using the
Caulfield-like character as the main character in 60 Years.104 The court said
that significant use of Caulfield’s character traits might have been necessary
for a parody of Catcher, but that the use was unnecessary for the purpose of
criticizing Salinger.105 In addition, the court recognized that 60 Years
utilized “nearly identical supporting characters, settings, tone, and plot
devices to create a narrative that largely mirrors that of Catcher.”106 The
court also addressed Colting’s adoption of a writing style similar to
Salinger’s and observed that it had “the effect of emphasizing the
similarities between [the two works], rather than casting a new, contrary
light upon [Catcher].”107 All of the above considerations led the court to
conclude that the third factor cut strongly against fair use.108
In applying the fourth fair use factor (the effect of the use upon the
potential markets for or value of the copyrighted work), the court stated that
the inquiry encompasses not only potential harm to the market for the
original, but also potential harm to the markets for derivative works.109 The
court explained that relevant derivative works are those that the author of an
original work would develop herself or license others to develop, and that
60 Years, which it regarded as simply a continuation of the Catcher story,
101
Id. See 17 U.S.C. § 107 (2006).
103
Id. See 17 U.S.C. § 107 (2006).
104
Salinger, 641 F. Supp. 2d at 263–65.
105
Id. at 264. Of course, the court had already concluded that 60 Years was not a parody of
Catcher. See id. at 256–60.
106
Id. at 264.
107
Id. at 267. Unlike the expression in a copyrighted work, a writer’s general style would
not normally be part of what the copyright on a work protects. See 17 U.S.C. § 102(b)
(2006). The court appeared to acknowledge this, but asserted that coupled with the
similarities in expression it had noted, the similarity in style was a further indication that
Colting had borrowed too much for purposes of the third fair use factor. See Salinger, 641
F. Supp. 2d at 266–67.
108
109
Id. See 17 U.S.C. § 107 (2006).
102
114
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was such a work.110 The court then addressed the potential harm to these
markets if the publication of works such as 60 Years became widespread.
According to the court, this practice “could substantially harm the market
for a Catcher sequel or other derivative works, whether through confusion
as to which is the true sequel or companion to Catcher, or simply because
of reduced novelty or press coverage.”111
The court acknowledged that Salinger had disavowed any intention to
create, or license others to create, derivative works.112 It regarded that fact
as irrelevant, however, given that an original work’s author is entitled to
preserve his or her opportunity to create derivative works.113 This approach,
the court observed, may provide an author an incentive to create if that
author’s “artistic vision includes leaving certain portions or aspects of his
character's story to the varied imaginations of his readers, or if he hopes that
his readers will engage in discussion and speculation as to what happened
subsequently.”114 The court concluded its application of the fourth fair use
factor by determining that it weighed, “albeit only slightly,” against a
finding of fair use.115
The court concluded that all four fair use factors cut against Colting,
making him unlikely to succeed with the fair use defense.116 Because
Salinger had already established a prima facie case of copyright
infringement, the court turned to the irreparable harm prong of the
preliminary injunction standard. Following Second Circuit precedent, the
court concluded that Salinger’s showing of likelihood of success on the
110
Id. at 267–68. The court thought it unlikely that 60 Years would harm the market for
Catcher itself, however. Id. at 267.
112
Id. at 268.
113
Id. The court noted that the copyright owner who initially refuses to create or license
derivative works is entitled to change his or her mind. Id. Salinger died while Colting’s
appeal was pending. Salinger, 607 F.3d 68, 70 n.1. Although his estate may take the same
view he did regarding possible derivative works, it is of course possible that the estate will
view the matter differently.
114
Salinger, 641 F. Supp. 2d at 268. The “author’s artistic vision” language has a moral
rights ring to it. See Visual Artists Rights Act, 17 U.S.C. § 106A (2006). See also Mass.
Museum of Contemporary Art Found., Inc. v. Buchel, 593 F.3d 38, 47–48, 49 (1st Cir.
2010) (noting that Visual Artists Rights Act (VARA) provides moral rights and discussing
right of integrity established by VARA). Novels, whether classics such as Catcher or ones
of lesser renown, do not qualify for VARA’s moral rights protections. See 17 U.S.C. §§
101, 106A (2006). The court’s use of the “artistic vision” language suggests, therefore, that
the court may have been more accommodating of Salinger’s concerns than existing law
warrants. For further discussion of such issues, see infra text accompanying notes 234–235,
267–275, 340–342.
115
116
Id.
111
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115
merits gave rise to a presumption of irreparable harm.117 The court therefore
issued a preliminary injunction, prohibiting the defendants from
“manufacturing, publishing, distributing, shipping, advertising, promoting,
selling, or otherwise disseminating any copy of 60 Years or any portion
thereof, in or to the United States.”118
B.The Second Circuit Decision
Colting appealed the preliminary injunction.119 The Second Circuit
upheld the district court’s resolution of the fair use issues, though with
minimal analysis.120 Nevertheless, the appellate court vacated the
preliminary injunction and remanded the case for reconsideration under a
new preliminary injunction standard.121
Relying on the Supreme Court’s decisions in eBay, Inc. v.
MercExchange, L.L.C. 122 and Winter v. Natural Resources Defense
Council,123 the Second Circuit outlined a new four-part test for whether a
preliminary injunction should be granted in a copyright case.124 First, the
copyright owner must have demonstrated either likely success on the merits
117
Id. at 268–69.
Id. at 269.
119
Salinger, 607 F.3d. While the case remained pending in the U.S. Court of Appeals for
the Second Circuit, J.D. Salinger died. Colleen and Matthew Salinger, trustees of the J.D.
Salinger Literary Trust, were substituted as parties. Id. at 70 n.1. In our discussion of the
Second Circuit’s decision and in later analysis, we will refer to Colleen and Matthew
Salinger collectively as “Salinger.”
120
Because the matter of likelihood of success on the merits was relevant to the preliminary
injunction standard announced in the decision, id. at 75, 78–83, the Second Circuit
commented briefly on the lower court’s fair use analysis. The Second Circuit noted that the
district court had focused mainly on the first fair use factor and on a finding that Colting
lacked credibility in his assertions about the purposes of his novel—a finding that was “not
clear error.” Id. at 83. Then, without commenting meaningfully on the other three fair use
factors, the appellate court noted its agreement with the district court’s conclusion that the
fair use defense was unlikely to protect Colting against liability. Id.
121
Id. at 77–80, 83–84.
122
547 U.S. 388 (2006).
123
129 S. Ct. 365 (2008).
124
Salinger, 607 F.3d at 79–83. The Second Circuit concluded that eBay controlled even
though it was a patent case and involved a request for a permanent injunction. Id. at 77–78.
See eBay, 547 U.S. at 391–95. According to the Second Circuit, eBay’s “central lesson”
was a prohibition on presuming any aspect of the relevant injunction test, Salinger, 607
F.3d at 78 n.7, along with a clear indication that injunctions should not be seen as
automatic remedies once liability has been established. Id. at 78. See eBay, 547 U.S. at
392–93. Winter was also relevant because there, the Supreme Court applied that standard to
the preliminary injunction setting. Winter, 129 S. Ct. at 375–76. See Salinger, 607 F.3d at
79.
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or serious merits-related questions and a balance of hardships tipping
clearly in the plaintiff’s favor. Second, the plaintiff must have demonstrated
that irreparable injury will result if the preliminary injunction is not issued,
with neither a presumption of irreparable harm nor general rules in that
regard being employed.125 Third, courts must assess the balance of
hardships between the parties and issue the preliminary injunction only if
that balance favors the plaintiff. Fourth, courts “must ensure that the ‘public
interest would not be disserved’ by the issuance of a preliminary
injunction.”126 Because the Salinger district court had considered only the
first part of the new test and had presumed the existence of irreparable
harm, the Second Circuit concluded that a remand was necessary.127
After outlining the new test, the court added related comments.
Concerning the likelihood-of-success-on-the-merits prong, the Second
Circuit emphasized that courts “should be particularly cognizant of the
difficulty of predicting the merits of a copyright infringement claim at a
preliminary injunction hearing,” and added that “[t]his difficulty is
compounded significantly when a defendant raises a colorable fair use
defense.”128 These comments suggest that courts should not be too quick to
find that the plaintiff would likely succeed on the merits.129
Regarding the test’s irreparable harm and balance of hardships prongs,
the court noted the related nature of the two, re-emphasized the
impermissibility of utilizing irreparable harm presumptions, and
underscored the test’s requirement of actual consideration of the relative
harms.130 Highlighting the types of interests at stake when copyright owners
seek injunctive relief, the Second Circuit observed that the copyright owner
has a strong property interest—as does the defendant concerning his work
125
Salinger, 607 F.3d at 79–80. In applying this part of the test, the court “must actually
consider the injury the plaintiff will suffer” if he loses at the preliminary injunction stage
but wins on the merits. Id. at 80. Special attention is to be paid to whether an award of
money damages would be adequate or, instead, inadequate to compensate for the harm
caused. Id. The Second Circuit’s enunciation of this part of the test reveals a bit of
inconsistency as to whether the plaintiff must show that irreparable harm will result or,
instead, that irreparable harm is likely. The court initially said that the second prong of the
test requires the plaintiff to “demonstrate[] ‘that he is likely to suffer irreparable injury in
the absence of an injunction.’” Id. (quoting Winter, 129 S. Ct. at 374). In immediately
following elaboration and in later comments, however, the Second Circuit spoke in terms
of harm that the plaintiff “will suffer” in the absence of a preliminary injunction, id. at 80–
81, and harm that non-issuance of an injunction “would actually cause.” Id. at 82.
126
Id. at 80 (quoting eBay, 547 U.S. at 391).
127
Id. at 83. The Second Circuit saw “no reason to disturb” the district court’s finding that
Salinger was likely to succeed on the merits. Id. See supra note 119.
128
Salinger, 607 F.3d at 80–81.
129
See id.
130
Id. at 81–82.
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“to the extent that [it] does not infringe the plaintiff’s copyright.”131 The
court also commented briefly on speech issues even though it did not
invoke the First Amendment as a basis for its decision to vacate the
preliminary injunction. It noted that the copyright owner has a First
Amendment right not to speak, but that the defendant also “has a core First
Amendment interest in the freedom to express him- or herself, so long as
that expression does not infringe the plaintiff’s copyright.”132 These
property and speech interests must receive due consideration at the
preliminary injunction stage, with a focus on whether they “cannot be
remedied after a final adjudication, whether by damages or a permanent
injunction.”133
In its final comments on the new standard, the Second Circuit turned to
the fourth prong’s requirement that the public interest be considered. After
observing that the Copyright Act seeks to promote the store of knowledge
to which the public has access, the court stated that by providing authors
incentives to create and thereby add to the store of knowledge, the law helps
account for the public interest.134 The court cautioned, however, that “[t]he
public’s interest in free expression is significant and is distinct from the
parties’ speech interests.”135
Noting that the First Amendment safeguards the public’s interest in
receiving information, the Second Circuit pointed out that “[e]very
injunction issued before a final adjudication on the merits risks enjoining
speech protected by the First Amendment.”136 But the court added that
“[s]ome uses . . . will so patently infringe another’s copyright, without
giving rise to an even colorable fair use defense, that the likely First
Amendment value in the use is virtually nonexistent.”137 The Second Circuit
appeared to suggest that a “colorable” fair use defense—which it thought
was not present in Salinger—may trigger a need for First Amendment
scrutiny as part of the public interest prong of the preliminary injunction
standard.138 If so, the Second Circuit may have begun contemplating a
tentative step away from the usual judicial tendency not to give special
consideration to First Amendment interests in copyright infringement cases.
In the following section, we consider that tendency and explore its
131
Id. at 81.
Id. See id. at 76, 82–83.
133
Id. at 81.
134
Id. at 82.
135
Id.
136
Id.
137
Id. at 82–83.
138
See id. at 81, 82–83. As will be seen, we regard Colting’s fair use defense as stronger
than the Salinger courts did. See infra text accompanying notes 170–235.
132
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inadequacy. Along the way, we assess Salinger and offer our criticisms of
Supreme Court copyright decisions in which First Amendment interests
have not been satisfactorily addressed.
IV.COPYRIGHT AND THE FIRST AMENDMENT:
INADEQUACIES OF THE TRADITIONAL VIEW
As noted earlier, courts consistently adhere to what we call the
traditional view of the relationship between copyright and the First
Amendment.139 Under that view, copyright law has built-in free speech
safeguards: the distinction between ideas and expression, and the fair use
doctrine. Users of copyrighted works do not need a First Amendment
defense, the argument goes, because the same interests underlying the First
Amendment will be adequately accounted for by users’ ability to borrow
ideas and other unprotected matter from copyrighted works and by users’
potential entitlement to the fair use defense.140
Of course, the doctrines that constitute the traditional view do help to
safeguard First Amendment interests. Do those doctrines extend far enough,
however, to serve as sufficiently reliable substitutes for direct consideration
of the First Amendment? To answer that question, we subject the distinction
between ideas and expression to closer analysis. Then we do the same with
the fair use defense.
A.The Distinction Between Ideas and Expression: Limited Value as
First Amendment Safeguard
A rule that infringement liability attaches if the defendant engaged in
any borrowing—whether of expression, ideas, or facts—from a copyrighted
work would obviously threaten free speech interests. Accordingly, the far
less onerous rule that infringement occurs only when the defendant
borrowed expression seems at first glance sufficiently in accord with the
First Amendment. If a user clearly lifted only ideas, facts, or other
unprotected matter from a copyrighted work, her free speech interests are
not compromised because she is not at risk of being held liable.141
More commonly, the fine line between expression and ideas or facts
means that the copyright owner’s infringement claim raises difficult
139
See supra text accompanying notes 13–14, 71–75.
See, e.g., Eldred, 537 U.S. at 219–20; Harper & Row, Publishers, Inc., 471 U.S.at 556,
560.
141
See, e.g., Eldred, 537 U.S. at 219. See 17 U.S.C. § 102(b) (2006). Indeed, if the case is
as clear-cut as the hypothetical posed here, it is likely that no lawsuit would even have been
filed.
140
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questions about whether the user borrowed expression or unprotected
matter.142 If the court concludes that the borrowing was limited to
unprotected matter, no liability attaches and the user’s speech interests are
vindicated without any need to resort to the First Amendment. However, if
the court determines that protected expression was taken, the defendant
faces liability unless the fair use doctrine or the First Amendment comes to
the rescue. The fair use defense may be held meritorious in some instances,
but a court that adheres to the traditional view will not apply the First
Amendment if the fair use defense fails.143 Yet the defendant may have
borrowed expression while engaging in creative activity that involved
speech—speech entitled to receive substantial First Amendment protection
if the context had not been that of copyright.144
In assuming that the distinction between ideas and expression suitably
protects First Amendment interests because users of copyrighted works may
freely borrow ideas, facts, and other unprotected matter, the traditional view
fails to accommodate the need speakers may have to borrow expression.
Users’ speech may sometimes be far more striking and effective if it can
utilize phrasing or other expression from copyrighted works.145 By flatly
prohibiting such borrowing, however, the distinction between ideas and
expression falls well short of meaningfully safeguarding free speech
interests. In the end, it offers First Amendment-like protection only when
that protection is not really needed because there is no risk of liability when
only ideas or facts are borrowed. If a First Amendment-based shield
becomes desirable because the defendant borrowed expression while
engaging in speech, the distinction between ideas and expression loses all
142
See Jeb Rubenfeld, The Freedom of Imagination: Copyright’s Constitutionality, 112
YALE L.J. 1, 14–15 (2002). The expression vs. ideas distinction is not an adequate First
Amendment protector, in part because “[d]istinguishing ideas from expression is
notoriously tricky.” Id. at 14. See Symposium, Constitutional Challenges to Copyright:
Copyright and Freedom of Expression, 30 COLUM. J.L. & ARTS 319, 324 (hereinafter
Constitutional Challenges) (remarks of Joseph Liu) (noting “notoriously vague” line
between expression and ideas).
143
See, e.g., Harper & Row, 471 U.S. at 556–57, 560, 569.
144
See Constitutional Challenges, supra note 142, at 325 (remarks of Joseph Liu). Political
speech, of course, receives extensive First Amendment protection. See, e.g., Citizens
United v. Fed. Election Comm’n, 130 S. Ct. 876, 892 (2010). Speech of a literary or artistic
nature is also fully protected noncommercial speech. The same is true of expression on
social, economic, or scientific issues, as well as speech on a wide range of other matters of
public interest and concern. See, e.g., Abood v. Detroit Bd. of Educ., 431 U.S. 209, 231
(1977). The Supreme Court has recognized that full First Amendment protection should be
accorded to “expression about philosophical, social, artistic, economic, literary, [and]
ethical matters—to take a non-exhaustive list of labels.” Id.
145
Netanel, supra note 74, at 14; Denicola, supra note 75, at 293; Lawrence Lessig,
Copyright’s First Amendment, 48 UCLA L. REV. 1057, 1069–70 (2000).
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effectiveness as a free-speech-protection device.146
Harper & Row, Publishers, Inc. v. Nation Enterprises147 reveals the
inadequacy of the distinction between ideas and expression as a protector of
First Amendment interests. There, the magazine known as The Nation used
300 to 400 words from the unpublished manuscript of former President
Ford’s book in an article that revealed portions of the book’s content and
addressed its discussion of the pardon issued to former President Nixon.148
The Harper & Row Court espoused the traditional view in declining to
consider a possible First Amendment privilege for the defendant. As the
Court observed, the distinction between ideas and expression and the fair
use doctrine adequately accommodated First Amendment interests.149
It is clear that if The Nation had borrowed only general ideas and facts
from the Ford manuscript, the magazine would not have been held liable.
The ability to use general ideas and facts should not have been seen as
eliminating a need for further consideration of the First Amendment,
however. Without the selective use of actual language from the Ford
memoirs, The Nation’s article would not have had the same force and
enlightening effect. Yet the Court’s decision effectively took away that
editorial freedom even though the defendants’ article constituted political
speech—a type of speech ordinarily very highly valued under the First
Amendment.150 Harper & Row thus contributed to a regrettable tendency
we continue to see: courts’ uncritical citation of the distinction between
ideas and expression as a reason for not confronting First Amendment
issues head-on.151
In discussing the relationship between copyright and the First
Amendment, the Harper & Row Court observed that the framers of the
Constitution regarded copyright as “the engine of free expression.”152 The
Court went on to stress that “[b]y establishing a marketable right to the use
of one’s expression,” copyright law furnishes incentives to create.153 The
146
See Netanel, supra note 74, at 14–20; Matthew D. Bunker, Adventures in the Copyright
Zone: The Puzzling Absence of Independent First Amendment Defenses in Contemporary
Copyright Disputes, 14 COMM. L. & POL’Y 273, 284 (2009).
147
471 U.S. 539 (1985).
148
Id. at 541–45, 548–49.
149
Id. at 556–57, 560.
150
See supra note 144.
151
See, e.g., Eldred, 537 U.S. at 219. Although key considerations helping to shape the
Harper & Row decision included the unpublished nature of the Ford manuscript and the
mysterious circumstances under which The Nation acquired a copy, the Court presumably
would have come to the same conclusion even absent those considerations. 471 U.S. at
543, 551–55, 562–69.
152
471 U.S. at 558.
153
Id.
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“engine of free expression” has operated undeniably well in that regard, but
copyright law also contemplates enhancing creativity by allowing, in
appropriate instances, room for others to borrow otherwise protected matter
from copyrighted works.154 Courts, as in Harper & Row, neglect that part of
the “engine” when they invoke the distinction between ideas and expression
as a justification for not applying First Amendment scrutiny despite the
presence of significant speech interests.155
Nearly two decades after Harper & Row, the Supreme Court decided
Eldred v. Ashcroft and again cited the distinction between ideas and
expression as a reason for not conducting an extensive First Amendmentbased inquiry.156 In Eldred, the Court upheld the Sonny Bono Copyright
Term Extension Act of 1998 (CTEA)157 against a constitutional challenge
based on the Copyright Clause and the First Amendment.158 As in Harper &
Row, Eldred gave the distinction between ideas and expression greater
weight than it should have received. Eric Eldred, who challenged the
CTEA, could not have achieved his expressive purposes by using only
unprotected ideas and facts that appeared in copyrighted works. Instead, he
needed to use those works’ expression—something he would have been free
to do very soon if not for the CTEA because the relevant copyrights had
been set to expire.159 Allowing Eldred to appropriate the ideas and facts thus
did not lead to a meaningful consideration of the First Amendment
argument.
The facts in Salinger v. Colting160 provide a further example of the idea
versus expression distinction’s inability to furnish meaningful protection for
First Amendment interests. Of course, in his novel, Colting could have
decided to feature an elderly protagonist who still has some of the same
characteristics he had as a teenager and still possesses some of the same
attitudes he displayed six decades earlier. Had Colting done only that, he
would not have been at risk of copyright infringement liability because the
court would have concluded that he merely borrowed unprotected ideas and
154
Campbell, 510 U.S. at 574–75, 577; Stewart, 495 U.S. at 236.
See Bunker, supra note 146, at 286 (noting that “invoking the idea/expression
dichotomy is frequently a sort of ceremonial throat-clearing—a ritual incantation to ward
off deep thought that allows the court to acknowledge free speech interests in the abstract
and then move on to the business of protecting the copyright holder”). See also supra note
144 (discussing speech highly valued under First Amendment).
156
537 U.S. at 219.
157
17 U.S.C. §§ 302, 304 (2006).
158
537 U.S. at 218, 221–22.
159
See id. at 193. One needs to account for the extremely long duration of copyrights when
considering how to accommodate First Amendment interests. See infra text accompanying
notes 236–244.
160
641 F. Supp. 2d 250 (S.D.N.Y. 2009), vacated, 607 F.3d 68 (2d Cir. 2010).
155
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themes. Colting, however, did not stop there. In 60 Years, he utilized
Salinger’s protected expression by drawing upon the Holden Caulfield
character, by employing Catcher-like dialogue and descriptions, and by
referring to plot details from the classic novel.161 But if Colting had not
borrowed expression from Catcher, the premise of his novel, the
commentary he sought to provide, and the insights he hoped to offer would
all have suffered.
A cynic might say that 60 Years did not match Catcher’s quality and
that society would be no worse off if the Coltings of the world could not
borrow from well-known works of literature in the manner that Colting did.
The literary quality, or lack of quality, of a defendant’s work is irrelevant,
however.162 The marketplace can sort out the quality issue. What is
important is the creative effort and the resulting creative work. Copyright
law is designed to enhance creativity, usually through granting authors
significant rights over their works but sometimes through allowing others to
borrow from those works.163 Whether well-done or poorly written, 60 Years
is speech—and a type of speech normally very securely protected under the
First Amendment.164
Despite copyright law’s creativity-enhancing purposes and the First
Amendment’s speech-furthering purposes, the district court preliminarily
enjoined the publication and distribution of 60 Years.165 To its credit, the
court did not attempt to ground its decision on an application of the
distinction between ideas and expression. It included the seemingly
obligatory mention of that distinction as a way of accommodating First
Amendment interests, but rested its decision largely on a rejection of the
defendants’ fair use defense.166 Although the Second Circuit upheld the
lower court’s fair use determination, it vacated the preliminary injunction
because of issues related to the appropriate standard for granting such
relief.167 The district court and the Second Circuit seemed to recognize that
the nature of Colting’s novel necessitated some borrowing of expression
from Catcher, but each court—erroneously, in our view—regarded the
borrowing that occurred as excessive, insufficiently transformative, and
161
Id. at 253–54, 259–63.
Campbell, 510 U.S. at 582–83; Ty, Inc. v. Publ’ns Int’l, Ltd., 292 F.3d 512, 523 (7th
Cir. 2002). If copyright law were to contemplate that courts serve as “judges of the quality
of expressive works,” a First Amendment problem would arise. Id.
163
Campbell, 510 U.S. at 575, 577, 579; Stewart, 495 U.S. at 236. See Suntrust Bank, 268
F.3d at 1265, 1268.
164
See supra note 144.
165
166
Id. at 255–68.
167
Salinger, 607 F.3d at 83–84.
162
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unduly prejudicial to Salinger’s interests as a copyright owner.168
B.The Fair Use Doctrine: Not Always Reliable as First Amendment
Safeguard
The fair use doctrine undeniably operates to protect free speech
interests in some instances. When a court holds that the defendant engaged
in fair use and therefore is not liable, the result is obviously the same one
the defendant would have hoped for if a true First Amendment defense had
been permitted. The problem arises, however, when the court rejects the fair
use defense and infringement liability looms. In that situation, it should not
automatically be assumed that the court’s fair use analysis took suitable
account of free speech concerns. Courts make that assumption, however,
when they adhere to the traditional view of the relationship between
copyright and the First Amendment. Further examination of Salinger and
relevant Supreme Court decisions will help demonstrate the uneasy nature
of that relationship.169
1.Shortcomings in First Factor Analysis
Using standards set in Campbell v. Acuff Rose Music, Inc.,170 the
district court171 labored mightily to conclude that 60 Years did not contain
ascertainable parodic content regarding Catcher or the Holden Caulfield
character and did not otherwise comment on Salinger’s copyrighted
material. Instead, the court saw extensive borrowing of protected
expression—and little more.172 The supposed absence of commentary in
Colting’s novel on Salinger’s copyrighted material caused the court to
conclude that the novel either was not a parody or was not one that could
168
See id. at 83; Salinger, 641 F. Supp. 2d at 256–68.
The Supreme Court decision receiving the most attention will be Campbell, 510 U.S.
170
510 U.S. at 577–78.
171
In the Salinger assessments in this subsection and the following one, mentions of “the
court” or “the Salinger court” will be references to the district court decision unless the
context clearly indicates otherwise. When we allude to something the Second Circuit held,
said, or suggested regarding fair use or First Amendment issues, we will normally say “the
Second Circuit” or “the appellate court.”
172
See supra text accompanying notes 89–98. The court “gave little weight to the fact that
Colting had imaginatively recast Salinger’s character in a wholly new novel that was
highly transformative.” Pamela Samuelson & Krzysztof Bebenek, Why Plaintiffs Should
Have to Prove Irreparable Harm in Copyright Preliminary Injunction Cases, 6 I/S: J.L. &
POL’Y FOR INFO. SOC’Y 67, 87 (2010).
169
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meet Campbell’s test for whether fair use protection might be available.173
The foregoing conclusion is troubling in two respects. First, it is
surprising that the court could find no implicit commentary on Salinger’s
Caulfield character in Colting’s novel. After repeatedly emphasizing the
similar attitudes and traits shared by the Caulfield and Mr. C characters, the
court characterized the similarities as clear indications that Colting had not
engaged in commentary on Caulfield or Catcher and had not otherwise
injected meaningful new content.174 Yet the court might just as easily have
seen implicit commentary in Colting’s decision to have his elderly character
possess many of the same attitudes and traits the character had as a
teenager. If a rap version of “Oh, Pretty Woman” with altered lyrics
reflected the requisite commentary on the copyrighted work,175 how could
there not be sufficient implicit commentary in Colting’s novel, given its
premise?176
Second, the Salinger court’s conclusion reveals problems with the
Campbell approach insofar as it contemplates fine determinations
concerning whether a supposed parody contains commentary on the
copyrighted work. Such commentary in a parody will nearly always be
implicit rather than explicit.177 Although fair use determinations are always
173
See supra text accompanying notes 91–94. Of course, Colting did not help himself by
calling 60 Years a sequel before Salinger filed the case and then attempting to make a
parody argument after the case was filed. See Salinger, 641 F. Supp. 2d at 258, 260, n.3;
Salinger, 607 F.3d at 83. But see Suntrust Bank, 268 F.3d at 1274 n.27 (noting that fair use
protection may apply to use that was parody even though defendant did not use “parody”
label).
174
See supra text accompanying notes 89–92. Besides basing his Mr. C character on
Salinger’s Caulfield character, Colting included Salinger himself as a character in 60 Years.
The court noted that even if the use of Salinger as a character injected commentary, the
commentary was on Salinger rather than on Salinger’s copyrighted material. Salinger, 641
F. Supp. 2d at 261 n.4, 262. Accordingly, the court concluded that any commentary on
Salinger would not enable Colting to satisfy Campbell’s test for whether a parody may
qualify for fair use treatment. Id. at 261 n.4. See Campbell, 510 U.S. at 580–82. This
conclusion serves as a further indication that Campbell’s test for whether a parody is
eligible for fair use treatment does not adequately account for First Amendment interests.
Colting’s inclusion of commentary on Salinger, while not helpful to Colting in the
Campbell-influenced fair use analysis, was speech that would normally be highly valued
expression if a true First Amendment analysis were employed. See supra note 144.
175
See Campbell, 510 U.S. at 581–83.
176
According to the Second Circuit, the “premise [of 60 Years] is that Salinger has been
haunted by his creation [the Caulfield/Mr. C character] and now wishes to bring him back
to life in order to kill him. Unsurprisingly, this task is easier said than done.” Salinger, 607
F.3d at 72. See Suntrust Bank, 268 F.3d at 1268–69 (concluding that nature and content of
defendant’s novel reflected commentary on well-known, borrowed-from novel).
177
For instance, the parody of “Oh, Pretty Woman” did not literally state the following:
“The song being parodied here sets forth a naïve and overly romantic view of relationships
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fact-specific, the danger of inconsistent results on seemingly similar fact
patterns seems especially significant when any commentary that is present
will be implicit.178 This potential for inconsistent results in cases presenting
similar instances of speech causes Campbell’s approach to the first fair use
factor to be inadequate as a First Amendment safeguard.179
Having concluded that Colting’s novel did not meet Campbell’s test for
whether a parody may merit fair use protection, the Salinger court
considered whether Colting’s use of Salinger’s copyrighted material was
otherwise sufficiently transformative to make the first factor point in favor
of fair use.180 The court went the plaintiff’s way on the transformative use
issues despite noting that Colting’s novel was somewhat transformative in
utilizing Salinger himself as a character for the purpose of engaging in
commentary on the famous author. In determining that 60 Years was
insufficiently transformative,181 the Salinger court provided an analysis that
was no more satisfactory than its analysis of whether Colting’s novel
between men and women and as such bears little relationship to the reality of life on the
street.” Rather, if commentary of that nature were present, it would be by inference from
the parody’s lyrics. See Campbell, 510 U.S. at 582–83.
178
It does not seem unreasonable to conclude that other courts, if faced with the same set of
facts present in Salinger, would have little difficulty finding the necessary commentary on
the plaintiff’s copyrighted material. As suggested earlier, see supra text accompanying
notes 175–176, the Supreme Court’s conclusion that the necessary commentary was
present in Campbell would seem to provide adequate cover for a court to identify the
requisite commentary in a fact pattern resembling that of Salinger. See Campbell, 510 U.S.
at 582–83. See also Suntrust Bank, 268 F.3d at 1268–69 (defendant’s novel included
commentary on borrowed-from novel). In Salinger, the district court cited Suntrust Bank,
but characterized it as a case in which the commentary on the underlying work was obvious
(in supposed contrast with Salinger, where the court said it was unable to identify any such
commentary). Salinger, 641 F. Supp. 2d at 1257–58. We submit that on the implicit
commentary issue, differences between the respective uses at issue in Suntrust Bank and
Salinger were far less clear-cut than the latter court indicated.
179
Similar problems attend Campbell’s previously noted parody versus satire distinction.
See supra note 51. For further examination of the distinction’s shortcomings in a First
Amendment sense, see infra text accompanying notes 312–315.
180
As noted earlier, Campbell had established that transformative uses of copyrighted
works tend to be given a preferred status in fair use determinations. See supra text
accompanying notes 45–47.
181
Salinger, 641 F. Supp. 2d at 262–63. One reason was the court’s expression of doubt
about Colting’s assertion that criticizing Salinger was a primary purpose of his novel, given
Colting’s pre-litigation statements indicating that he regarded the novel as a sequel to
Catcher. Id. at 260 n.3, 262. In its limited review of the district court’s fair use analysis, the
Second Circuit noted that the lower court’s determination regarding Colting’s credibility
was “not clear error.” Salinger, 607 F.3d at 83. Colting did himself no favors with his prelitigation statements, but we submit that the district court and the Second Circuit placed too
much weight on those statements—and too little weight on key fair use and free speech
considerations—in deciding the case.
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reflected commentary on Salinger’s copyrighted material. The court took an
unduly narrow view of what Campbell contemplated in that decision’s
discussion of transformative uses.182
Perhaps because the well had already been poisoned by the court’s
conclusion that commentary on Salinger was irrelevant to whether 60 Years
satisfied Campbell’s parody-as-fair-use-candidate test,183 the Salinger court
inappropriately minimized the significance of Colting’s use of Salinger as a
character in order to comment on the well-known author. That commentary
added significant new material to what Colting borrowed from Catcher184
and served to give Colting’s novel a purpose different from that of Catcher.
Yet the court, seemingly set on downplaying the importance of any
commentary on Salinger, read into Campbell’s discussion of transformative
uses a supposed requirement that the use be consistently transformative.
Colting’s use did not meet that requirement, the court concluded, because
the Salinger character appeared on “only 40” pages of a 277-page novel.185
However, no such requirement is stated in Campbell or reasonably
contemplated by it.186
If properly applied, Campbell’s guidance concerning the first fair use
factor can help lead to well-reasoned fair use determinations. With suitable
modifications of the sort to be outlined later herein, Campbell’s guidance
may also go a long way toward safeguarding First Amendment interests.187
The Salinger court, however, misapplied Campbell, not only by ascribing
too narrow a scope to the concept of a transformative use188 but also by
182
See Campbell, 510 U.S. at 578–79. In Salinger, the Second Circuit chose not to secondguess the lower court’s fair use determination. Salinger, 607 F.3d at 83. However, the
appellate court observed: “It may be that a court can find that the [first] fair use factor
favors a defendant even when the defendant and his work lack a transformative purpose,
[but we] need not decide that issue here.” Id. (emphasis omitted). This comment could
suggest that if the Second Circuit had been in the district court’s position, it might have
viewed the first factor differently.
183
See supra text accompanying notes 88, 94.
184
It might be argued that Colting could have commented on Salinger and his reclusive
nature without borrowing expression from Catcher. However, the strong public association
between Salinger and his famous Holden Caulfield character would make references to that
character a logical thing to do in the course of commentary on the well-known author.
Moreover, commentary on a well-known author would normally receive very substantial
First Amendment protection. See infra text accompanying notes 203–204.
185
186
Neither does Campbell seem to contemplate the page-counting exercise engaged in by
the Salinger court. But if page-counting were relevant to the question of whether the use
was transformative, use of Salinger as a character on 40 pages of the novel should not be
seen as insignificant.
187
188
As will be seen, the court’s mishandling of the transformative use issues under the first
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summarily determining that Colting’s profit motive caused the first fair use
factor to operate against him.189 Campbell called for a careful weighing and
balancing process under factor one, with transformative uses and purposes
such as criticism or commentary having the potential to offset a defendant’s
commercial motivation. The Salinger court failed to pay adequate attention
to Campbell’s instruction that in the fair use analysis, the significance (or
lack of significance) of a defendant’s commercial motivation will vary from
case to case—depending largely on the presence or absence of sufficient
offsetting considerations.190
Moreover, the Salinger court appeared to ignore an important
observation in Campbell regarding different sorts of commercial
motivations. The Campbell observation was not extensively developed,191
but if the Salinger court had heeded it, the first fair use factor would likely
have operated in Colting’s favor. In Campbell, the Supreme Court
distinguished between two uses of a parody of a copyrighted work: a
defendant’s use of the parody in order to advertise a product and a
defendant’s sale of the parody itself. The court suggested that the former
should trigger greater concern, and the latter lesser concern, in the fair use
analysis.192 In Campbell, the parody itself—2 Live Crew’s version of the
copyrighted song—was being sold. The defendants were not attempting to
advertise a product (say, beer) when they distributed their parody.193
As in Campbell, the parody in Salinger (Colting’s novel) was to have
been sold.194 The Salinger court, however, missed this insight from
Campbell, and in the process overlooked what should have been a key
consideration. Of course, the Salinger court concluded that 60 Years was
not a parody or, if it was a parody, was not one that commented on
Salinger’s copyrighted material.195 But neither of those alternative
conclusions makes Campbell’s distinction inapplicable. Campbell referred
to a parody itself being sold because a parody was present in the facts. What
Campbell logically contemplated, however, was a distinction between two
uses of speech (whether a parody or not): speech used to promote the sale of
fair use factor seems to have had spillover effects regarding the third fair use factor. See
infra text accompanying notes 219–222.
189
190
See Campbell, 510 U.S. at 584–85. The Salinger court’s discussion of the commercial
motivation issue was confined to two sentences. Salinger, 641 F. Supp. 2d at 263.
191
See Campbell, 510 U.S. at 585.
192
Id.
193
Id. Therefore, the Court’s comment on parodies used to advertise products was largely
dictum—but nonetheless instructive dictum. See id.
194
195
Id. at 256–61.
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a product and speech itself being sold.196 In Salinger, Colting’s novel
represented speech for sale, regardless of whether the novel amounted to a
parody. The court therefore should have considered the nature of what
Colting was selling when it applied the first fair use factor. Had it done so,
Colting’s chances of succeeding with the fair use defense would have been
enhanced and the court might have reached a result more in accord with
Campbell’s signal regarding the fair use analysis.
Campbell, moreover, appears to have contemplated something further:
a First Amendment-friendly distinction between uses of speech, even
though the Court did not expressly invoke the First Amendment.197 A great
deal of speech that receives full First Amendment protection is profitmotivated but amounts to speech itself being sold (e.g., newspapers,
magazines, books, movies, music, and the like). Such speech is classified as
noncommercial in nature because the expression’s entertainment, artistic,
creative, or informational nature outweighs the underlying profit motive.198
Less-protected commercial speech, on the other hand, is present when the
speech is used to propose a commercial transaction (e.g., sale of a
product)—the very type of speech Campbell identified as a weaker fair use
candidate.199 The Campbell distinction thus offered a potential method for
accommodating free speech concerns under the fair use rubric, if lower
courts do a better job than the Salinger court did in picking up on it. Yet to
be truly effective as a First Amendment safeguard, the distinction must be
clarified and made a more explicit part of the analysis.200
196
See Campbell, 510 U.S. at 585.
See id. Campbell’s only mention of the First Amendment came in a parenthetical
quotation of a sentence from a lower court decision dealing with trademark issues. See id.
at 583.
198
See, e.g., United States v. Playboy Entm’t Group, 529 U.S. 803, 807, 811, 814 (2000);
Harte-Hanks Commc’ns, Inc. v. Connaughton, 491 U.S. 657, 667 (1989); Hustler
Magazine v. Falwell, 485 U.S. 46, 47–51, 55–56 (1988); N.Y. Times Co. v. Sullivan, 376
U.S. 254, 265–66 (1964); Joseph Burstyn, Inc. v. Wilson, 343 U.S. 495, 501–02 (1952).
Full First Amendment contemplates that the government will have little latitude to regulate
the content of speech. See, e.g., Citizens United v. Fed. Election Comm’n, 130 S. Ct. 876,
898 (2010); Playboy, 529 U.S. at 812–13. For further discussion of full First Amendment
protection and the types of speech to which it attaches, see supra note 144.
199
See Campbell, 510 U.S. at 585. Supreme Court decisions usually define commercial
speech as “speech that does no more than propose a commercial transaction.” See, e.g., Va.
State Bd. of Pharmacy v. Va. Citizens Consumer Council, Inc., 425 U.S. 748, 762 (1976).
The clearest example of commercial speech is an advertisement for the sale of a product or
service or for the promotion of a business. See, e.g., 44 Liquormart, Inc. v. Rhode Island,
517 U.S. 484, 488, 496 (1996); Va. Bd. of Pharmacy, 425 U.S. at 762. Commercial speech
receives at most an intermediate level of First Amendment protection rather than the full
protection extended to noncommercial speech. See, e.g., Va. Bd. of Pharmacy, 425 U.S. at
763–65, 770–72.
200
We will propose a way to do so. See infra text accompanying notes 290–296.
197
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129
One more aspect of Salinger’s first factor analysis bears mentioning
because it further illustrates the inaccuracy of the conventional wisdom that
the fair use doctrine adequately protects free speech interests and makes a
First Amendment defense unnecessary.201 As noted earlier, the court made
much of the distinction between commentary on Salinger’s copyrighted
materials and commentary on Salinger himself. The latter commentary was
all the court could identify—a finding that helped to doom Colting’s fair
use chances.202 What clearly hurt Colting in the fair use analysis would have
helped him, however, if proper First Amendment scrutiny had been applied.
Despite his desire to protect his privacy, Salinger’s status as one of the most
well-known writers of our time made him a public figure.203 Commentary
on, or other speech about, public figures normally receives very substantial
protection under the First Amendment.204
Consider, for instance, what Salinger would have had to prove if he had
been suing Colting for defamation rather than copyright infringement. A
public figure such as Salinger cannot win a defamation case without
proving that the defendant made the litigation-triggering false statement
with actual malice (i.e., with knowledge of the statement’s falsity or with
reckless disregard for the truth).205 This proof-of-fault requirement is an
example of full First Amendment protection, as tailored to a particular type
of case.206
If First Amendment considerations dictate that Salinger would have
had to prove actual malice in order to win a defamation case, First
Amendment considerations should have a role to play in other litigation—
even copyright infringement litigation207—in which the defendants are at
risk of liability for speech about a public figure. Although it could be
argued that the free speech interests of defendants in copyright infringement
cases should take a backseat to the plaintiff’s important interest in
protecting his copyright, the argument fails when one considers defamation
law. The plaintiff in a defamation case has a very substantial interest at
201
See supra text accompanying note 169.
See Salinger, 641 F. Supp. 2d at 260–63.
203
Cf. Gertz v. Robert Welch, Inc., 418 U.S. 323, 345 (1974) (explaining scope of public
figure classification in defamation cases).
204
See, e.g., N.Y. Times, 376 U.S. at 272 .
205
Id. at 279–80; Curtis Publ’g Co. v. Butts, 388 U.S. 130, 162, 164 (1967) (Warren, C.J.,
concurring in the result); Gertz, 418 U.S. at 342.
206
See N.Y. Times, 376 U.S. at 264–65, 272.
207
See Bunker, supra note 146, at 294–95. Even though the Second Circuit in Salinger did
not second-guess the lower court’s fair use determination, Salinger, 607 F.3d at 83, and did
not invoke the First Amendment as a ground for vacating the preliminary injunction, id. at
76, the appellate court acknowledged that defendants in copyright infringement cases have
First Amendment interests at stake. Id. at 81, 82–83.
202
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stake: protection of his or her reputation. Despite that interest’s
significance, defendants receive extensive First Amendment protection.208
Protecting a copyright, important as it is, seems no more significant an
interest than protecting one’s reputation. It may even be less important than
the reputational interest. Reasonable ways to accommodate First
Amendment interests in copyright infringement cases can be devised.209
2.Shortcomings in Second, Third, and Fourth Factor Analyses
The Salinger court’s applications of the second, third, and fourth fair
use factors were also problematic for, and not suitably accommodating of,
the First Amendment interests of those who borrow from copyrighted works
in the course of their own creative activity.210 On its way to determining
that the second factor (the nature of the copyrighted work)211 cut against fair
use, the court noted that as a work of fiction, Catcher was the type of
“creative expression [that] falls within the core of the copyright’s protective
purposes.”212 The court then took an approach consistent with one courts
often utilize in making fair use determinations: concluding that factor two
worked against Colting because the work from which he borrowed was
highly creative in nature, as opposed to largely factual.213
At first glance, this conclusion seems unobjectionable. However, the
court failed to consider the combined effect of Campbell and Harper &
Row.214 In Harper & Row, the Supreme Court emphasized that if a
defendant borrowed from the plaintiff’s unpublished work, such a
borrowing would cause the second factor to cut strongly against fair use. A
borrowing from a published work, on the other hand, would trigger far less
concern in the fair use analysis.215 Surprisingly, the Salinger court did not
address the published versus unpublished consideration when it applied the
second factor.216 In borrowing from Catcher, Colting was borrowing from a
208
See N.Y. Times, 376 U.S. at 264–65, 272; Butts, 388 U.S. at 162, 164 (Warren, C.J.,
concurring in the result); Gertz, 418 U.S. at 325, 332, 346–48.
209
210
Again, we focus on the district court’s decision. The Second Circuit merely recited the
basics of what the district court had determined regarding the second, third, and fourth
factors, and did not subject the lower court’s findings regarding those factors to any
analysis. Salinger, 607 F.3d at 73–74, 83.
211
17 U.S.C. § 107 (2006).
212
213
Id. See HOWARD B. ABRAMS, 2 THE LAW OF COPYRIGHT § 15:52 (2006).
214
471 U.S. 539 (1985).
215
Id. at 550–55.
216
See Salinger, 641 F. Supp. 2d at 263. That very issue had been key in Salinger v.
Random House, Inc., 811 F.2d 90, 97, 100 (2d. Cir. 1987).
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very widely published work. The Salinger court thus appeared to ignore a
consideration that should have made factor two insignificant in the analysis.
This conclusion is underscored by the approach taken in Campbell to
the second factor. There, the Court noted that the defendants had borrowed
from a highly creative work, but that such a fact “is not much help in this
case, or ever likely to help much in separating the fair use sheep from the
infringing goats in a parody case, since parodies almost invariably copy
publicly known, expressive works.”217 Given Catcher’s iconic status and
Salinger’s renown, the novel and its author were logical targets for
Colting’s commentary.218 Accordingly, the Salinger court’s application of
the second factor should have reflected reasoning similar to that employed
in Campbell. Had such reasoning been employed, factor two would have
been deemed unimportant. Moreover, the application of the second factor
would have been more sensitive to First Amendment interests because it
would have helped to preserve room for Colting’s creative activity
involving speech.
Problems also attend the Salinger court’s application of the third fair
use factor, which requires an examination of the amount and substantiality
of the portion of the work used in relation to the work as a whole.219 The
court’s previously noted mishandling of the transformative use issues under
the first factor220 probably had spillover effects regarding the third factor. In
determining that factor three operated against Colting, the court stressed
what it regarded as a large and excessive amount of borrowing of protected
expression from Catcher.221 The court failed, however, to take proper
account of Campbell’s recognition that for purposes of the third factor, a
parodist or other commentator may need to be able to borrow more from—
and more recognizable parts of—the copyrighted work so that the public
can recognize the object of the parody or other commentary.222 The Salinger
217
See id. Although the Salinger court thought that Colting was only borrowing from
Catcher rather than commenting on it, the commentary Colting allegedly offered would
have been premised on Catcher’s fame and stature. Moreover, there was Colting’s
commentary on Salinger himself—commentary that the court recognized was present. See
Salinger, 641 F. Supp. 2d at 260–63. It would be logical for anyone engaging in
commentary on, or criticism of, a famous author to allude to and borrow from his bestknown work. However, no such discussion appeared in the court’s opinion. See id. at 263.
219
17 U.S.C. § 107 (2006).
220
See supra text accompanying notes 170–190.
221
222
See Campbell, 510 U.S. at 587–89. See also Suntrust Bank, 268 F. 3d at 1271 (noting
that even though defendant whose novel parodied Gone With the Wind (GWTW) borrowed
heavily from that famous novel, “[i]t is hard to imagine how [the defendant author] could
have specifically criticized GWTW without depending heavily on copyrighted elements of
that book”).
218
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court’s factor-one error in undervaluing the commentary element in
Colting’s novel thus infected the court’s factor-three analysis. If the court
had been more cognizant of what Campbell suggested, the court’s
application of the third factor would have better accommodated First
Amendment interests.
The Salinger court’s application of the fourth fair use factor (effect of
the use on potential markets for or value of the copyrighted work)223 also
fell short in a First Amendment sense. The court complied with precedent—
not just any precedent, but a Second Circuit decision involving J.D.
Salinger224—in noting that the determination of harm to potential derivative
markets should focus on reasonable markets of the sort that copyright
owners would in general pursue, even if the copyright owner has
“disavowed any intention to [exploit those markets] during his lifetime.”225
As the court noted, the copyright owner’s “right to change his mind”
suggests that opportunities to take advantage of such markets should remain
unimpaired.226
Here, part of the fault lies with precedent cases whose call for focus on
derivative markets that copyright owners would typically pursue allowed
general rules to assume more significance in Salinger than a key fact to the
contrary. Fair use, however, is supposed to be a fact-specific, case-by-case
determination.227 Salinger made clear his unwillingness to create or license
derivative works based on Catcher, the Caulfield character, or his other
copyrighted works.228 That fact should have been accounted for in the fair
use analysis, instead of being effectively ignored in favor of the fiction
created by general rules regarding derivative markets that copyright owners
typically exploit.229 Had that fact received proper attention, the fourth
factor, which the district court regarded as weighing “only slightly” against
223
17 U.S.C. § 107 (2006); Salinger, 641 F. Supp. 2d at 268.
Random House, 811 F.2d at 99.
225
Salinger, 641 F. Supp. 2d at 268 (quoting Random House, 811 F.2d at 99).
226
Id. (quoting Random House, 811 F.2d at 99).
227
Campbell, 510 U.S. at 577. See 17 U.S.C. § 107 (2006). Although Campbell did specify
that fair use determinations are a case-by-case inquiry, the decision also indicated that the
application of the fourth fair use factor should take into account the markets that copyright
owners in general would pursue. Campbell, 510 U.S. at 592. We contend, however, that
when specific facts in a given case stand in contrast with copyright owners’ general
tendencies, the specific facts should be given greater weight.
228
Both the Second Circuit and the district court mentioned this fact. Salinger, 607 F.3d at
71; Salinger, 641 F. Supp. 2d at 268. See Random House, 811 F.2d at 99.
229
The general rules were a fiction as to Salinger, given his refusals to create or license
derivative works. See Salinger, 607 F.3d at 71. They are not necessarily a fiction as to
copyright owners generally.
224
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133
fair use,230 might have cut the other way. In the process, the defendants’ free
speech interests would have been more appropriately accounted for, and the
First Amendment would have been better served.231
The rest of the blame for a deficient fourth factor analysis must be
placed directly on the Salinger court, which asserted that a copyright
owner’s entitlement to refuse to create or license derivative works may
serve as an important incentive for a would-be creator to create an
underlying work.232 This premise is questionable. It is difficult to believe
that J.D. Salinger regarded, or that any author would regard, the ability to
adopt a no-derivative-works policy as a meaningful incentive to create a
work. Of course, authors may—as Salinger did—find it desirable to refuse
to allow derivative works once the copyrighted work has been created, but
that is not the same as furnishing an incentive for the creation of the work.
More likely, the real incentives will lie in the rights to exploit the resulting
work in an economic sense, and in the self-fulfillment that results from
exercising creative impulses.233
The Salinger court’s assertion regarding incentives was part of a
discussion in which the court stressed the importance of preserving an
author’s “artistic vision.”234 This problematic reference suggests that the
district court may have been influenced by moral rights-like arguments. As
explained more fully elsewhere herein, moral rights are not available to
authors of works of the sort at issue in Salinger.235 In the end, the court’s
fourth factor analysis was overly solicitous of copyright owners’ interests
230
Salinger, 641 F. Supp. 2d at 268. See Suntrust Bank, 268 F.3d at 1277 (Marcus, J.,
specially concurring) (noting that copyright owner’s practice of refusing to grant licenses
for derivative works that would be parodies is a consideration that “further undermines”
copyright owner’s claim).
231
Of course, now that Salinger has died and his heirs control the copyright on his works,
they could be more inclined to consider licensing derivative uses of the copyrighted
material. That possibility may have been what the Second Circuit suggested in its
comments about what could be considered on remand. See Salinger, 607 F.3d at 83 n.12.
But it is also possible that the heirs will decide to remain true to Salinger’s clear wish that
derivative works not be permitted.
232
233
We refer here to the copyright owner’s rights to make and distribute copies of the work,
prepare derivative works, perform the work, and display the work. 17 U.S.C. § 106 (2006).
Each of these rights, if affirmatively exercised, may benefit the copyright owner
financially. See Salinger, 641 F. Supp. 2d at 268. However, the economic incentives
provided by the Copyright Act are not the only reasons why authors create new works. See
generally Roberta Rosenthal Kwall, Inspiration and Innovation: The Intrinsic Dimension
of the Artistic Soul, 81 NOTRE DAME L. REV. 1945 (2006).
234
235
For an introduction to this issue, see supra note 114 and accompanying text. The moral
rights issue is examined more fully at infra text accompanying notes 267–273, 340–342.
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and insufficiently attentive to countervailing speech interests. Thus, it was
unsound from a First Amendment perspective.
3.The First Amendment Implications of Copyright Duration Extensions
Suitable allowance for First Amendment interests in copyright
litigation is important for another reason: the very lengthy duration of
copyrights. An erroneous exclusion of First Amendment safeguards—or the
inclusion of an inadequate set of such safeguards—becomes especially
problematic when copyright owners’ rights receive extended periods of
protection at the expense of would-be users’ speech interests. Two duration
extensions enacted by Congress during recent decades have given
copyrights much longer lives than prior law contemplated.
Under the Copyright Act of 1909, copyrights lasted for a basic term of
28 years from publication of the work, plus a renewal term of 28 years if the
renewal right was exercised during the basic term’s last year.236 The
Copyright Act of 1976 extended the duration of copyrights on pre-1978
works by tacking on 19 years to the renewal term. In addition, the 1976 Act
created a new system for determining the duration of copyrights on works
created in 1978 or later. For most such works, the copyright would exist for
the life of the creator plus 50 years.237
Only two decades after the effective date of the changes just noted,
Congress enacted the Sonny Bono Copyright Term Extension Act of 1998
(CTEA).238 The CTEA added 20 years to the duration of future copyrights
as well as existing copyrights. As a result, the copyright on a work created
in 1978 or later lasts for the creator’s life plus 70 years (rather than life plus
50 years).239 If a copyright on a pre-1978 work was still in effect as of 1998,
it qualified for the CTEA’s 20-year extension. Thus, for qualifying pre1978 works, the copyright’s maximum duration has become 95 years. This
figure results from the combined effects of the 1976 and 1998 duration
extensions, which have operated to supplement the 28-year basic term with
a renewal term of 67 years.240
236
Copyright Act of 1909, ch. 320, §§ 23–24, 35 Stat. 1075, 1077–78 (1909) (current
version at 17 U.S.C. § 304 (2006)).
237
17 U.S.C. § 302 (2006).
238
Pub. L. No. 105-298, § 102, 112 Stat. 2827, 2827–28 (codified at 17 U.S.C. §§ 302, 304
(2006)).
239
17 U.S.C. § 302(a). The rule stated in the text is the basic rule for copyright duration.
The copyright on a jointly created work from 1978 or later exists for 70 years beyond the
death of the last surviving creator. Id. § 302(b). If the work from 1978 or later is a workmade-for-hire, the copyright lasts for 95 years from first publication or 120 years from
creation, whichever comes first. Id. § 302(c).
240
17 U.S.C. § 304 (2006).
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135
Salinger’s copyright on Catcher, secured in 1951 and renewed in 1979,
will exist until the end of the year 2046 because of the duration extensions
provided for in the 1976 Act and the 1998 CTEA. If not for those two
extensions, Salinger’s copyright would have expired at the end of 2007 (56
years from 1951),241 and there would have been no Salinger v. Colting. In
that hypothetical world, Catcher would have been a public domain work—
meaning that Colting would have had free rein to borrow however much he
wanted in writing his 2009 novel without infringing upon Salinger’s
copyright.242
After Congress decided to enact the duration extensions criticized here,
the Supreme Court held that Congress could constitutionally make such a
policy judgment even if it acted unwisely in doing so.243 But the effects of
the congressional actions should not be ignored when courts decide
whether—and how—to accommodate First Amendment interests in
copyright infringement cases. A rule that tells creators in Colting’s position
to “wait X more years, until the copyright expires” is unjustifiably
dismissive of freedom of speech concerns when X is a substantial length of
time that owes its existence solely to duration extensions.244
Of course, some readers of Eldred v. Ashcroft245 may contend that the
Supreme Court’s decision closed the door on arguments in favor of a
greater role for the First Amendment in copyright litigation. The Court held
in Eldred that the CTEA, even if an unwise enactment, violated neither
Article I, § 8 nor the First Amendment.246 However, the Article I, § 8 issues
dominated the majority opinion.247 The First Amendment issues received
second-billing, largely because of the traditional notion that copyright’s
“built-in First Amendment accommodations”—the distinction between
ideas and expression and the fair use doctrine—sufficiently safeguard free
241
See, e.g., Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 29–30, 33–34
(2003) (noting that once copyright on work expires, there are no restrictions on others’
ability to use or exploit the work).
243
Eldred, 537 U.S. at 208, 218–19, 222.
244
In Colting’s case, “X” would have been 37 more years—measuring from 2009 (the date
of his novel) through 2046. See supra notes 236–240 and accompanying text. See also
Lessig, supra note 145, at 1067 (asserting that retrospective application of duration
extensions implicates First Amendment); Netanel, supra note 74, at 23–24 (contending that
in view of duration extensions, copyright’s limited term does not serve as meaningful
protector of First Amendment interests).
245
537 U.S. 186 (2003).
246
Id. at 208, 218–19, 222.
247
See id. at 198–218. For a detailed analysis of Eldred, see Arlen W. Langvardt & Kyle T.
Langvardt, Unwise or Unconstitutional?: The Copyright Term Extension Act, the Eldred
Decision, and the Freezing of the Public Domain for Private Benefit, 5 MINN. INTELL.
PROP. REV. 193 (2004).
242
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speech interests.248 The Court concluded that “when, as in this case,
Congress has not altered the traditional contours of copyright protection,
further First Amendment scrutiny is unnecessary.”249 But the Court also
recognized that the court below “spoke too broadly when it declared
copyrights ‘categorically immune from challenges under the First
Amendment.’”250
So, how should we interpret Eldred’s discussion of First Amendment
issues? Given the Court’s “as in this case” reminder,251 it becomes
important not to stray too far from the context in Eldred—a constitutional
challenge to a duration extension that postponed the plaintiff’s ability to
produce and distribute copies of works otherwise about to enter the public
domain.252 Eldred thus did not hinge on whether an otherwise infringing use
should be protected under the fair use doctrine. Instead, it presented a
broader question: whether uses that would not have been infringing in the
absence of the CTEA could constitutionally be classified as infringing for
many years to come through retroactive application of the duration
extension.253 Accordingly, the Eldred Court made only general references to
the fair use doctrine, as opposed to conducting the factor-based analysis that
becomes essential when a case’s outcome depends upon a fair use
determination.254 The Court’s suggestions about the relationship between
the fair use doctrine and the First Amendment thus relate more directly to
the context of a challenge to a sweeping congressional enactment than to
whether the fair use doctrine does what a First Amendment defense would
do when copyright owners sue users of particular works.
Using language that underscores this point, the Eldred Court observed
that the CTEA “protects authors’ original expression from unrestricted
exploitation.”255 According to the Court,
[p]rotection of that order does not raise the free speech concerns
present when the government compels or burdens the communication of
particular facts or ideas. The First Amendment securely protects the
freedom to make—or decline to make—one’s own speech; it bears less
heavily when speakers assert the right to make other people’s speeches. To
the extent such assertions raise First Amendment concerns, copyright’s
248
Eldred, 537 U.S. at 219, 221.
Id. at 221.
250
Id. (quoting Eldred v. Reno, 239 F.3d 372, 375 (D.C. Cir. 2001)).
251
Id.
252
See id. at 193–94.
253
See id. at 193–94, 198, 213–15.
254
See id. at 219–20.
255
Id. at 221.
249
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137
built-in free speech safeguards are generally adequate to address them.256
The Court probably was incorrect in arguing that the First Amendment
“bears less heavily when speakers assert the right to make other people’s
speeches.”257 But even assuming that this statement was correct and that the
Eldred plaintiff should be seen as having asserted such a right, neither the
Court’s statement nor the Eldred outcome should be treated as controlling
in a case such as Salinger. Colting borrowed from Salinger’s copyrighted
work, but he did so in presenting his own speech: a novel that added much
to the borrowed material while offering commentary on Catcher and its
famous author. He therefore was not simply asserting “the right to make
[Salinger’s] speeches.”258 Accordingly, Colting and similarly situated
defendants should not be stymied by Eldred’s statement that “copyright’s
built-in free speech safeguards are generally adequate” to address the less
weighty First Amendment concerns present when a speaker asserts the right
to “make other people’s speeches.”259
When the considerations outlined here are coupled with Eldred’s
acknowledgment that copyrights are not “categorically immune from
challenges under the First Amendment,”260 it becomes clear that parties in
Colting’s position should not be foreclosed from proposing a more
expansive role for the First Amendment in infringement litigation. Eldred
obviously cannot be read as calling for a freestanding First Amendment
defense, but nothing in Eldred would seem to preclude adoption of a fair
use analysis that is more First Amendment-friendly.261 No such preclusion
should result from Eldred’s statement that “when, as in this case, Congress
has not altered the traditional contours of copyright protection, further First
Amendment scrutiny is unnecessary.”262 In addition to the previously noted
limiting factor of the Court’s “as in this case” language,263 Eldred’s mention
of the government’s “not [having] altered the traditional contours of
copyright protection”264 serves as a further indication that the First
Amendment may play a more meaningful role in certain infringement cases.
The Court regarded enactment of a copyright duration extension as
256
Id.
Tushnet, supra note 75, at 563–64.
258
See Eldred, 537 U.S at 221.
259
See id.
260
Id. (quoting Eldred, 239 F.3d at 375).
261
Later in the article, we will propose and elaborate on such an analysis. See infra text
accompanying notes 279–342.
262
Eldred, 537 U.S. at 221.
263
264
Eldred, 537 U.S. at 221.
257
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consistent with copyright’s “traditional contours,”265 but government action
inconsistent with those contours may necessitate more rigorous First
Amendment scrutiny than copyright’s “built-in free speech safeguards” can
provide.266
Consider, for instance, what Salinger sought in the case against
Colting, and do so in light of the famous author’s longstanding attitude
toward Catcher and the Holden Caulfield character. One expects copyright
owners to be a protective lot regarding their creations. Salinger, however,
was protective in the extreme. He was adamant not only about preventing
others from using his copyrighted material but also about his own refusals
to write a Catcher sequel or otherwise re-employ the Caulfield character.267
Salinger seemingly wanted to classify Catcher and Caufield as off-limits to
all (himself included), as if any later use would compromise the integrity of
the work and the character and would alter the vision he had for them at the
time of creation.268
In this sense, Salinger went beyond what copyright law normally
contemplates even in its recognition that copyright owners may choose not
to prepare derivative works and may decline others’ requests for such a
license.269 Salinger’s apparent focus on preserving the integrity of Catcher
and the Caulfield character suggests a moral-rights-like objective for the
requested preliminary injunction.270 Moral rights, however, have not been
part of the “traditional contours” of U.S. copyright law.271 The emphasis has
been on economic rights, as opposed to a moral rights regime that would
focus on preserving the work’s integrity and the creator’s artistic vision.272
265
See id. at 204, 208, 218, 221.
See id. at 221.
267
See Salinger, 607 F.3d at 71, 74.
268
See id.
269
See 17 U.S.C. § 106 (2006) (setting forth rights that copyright owner may choose to
exercise or not exercise).
270
See H.R. REP. NO. 101–514, at 6915–16 (1990), reprinted in U.S.C.C.A.N. 6915–16
(noting nature of moral rights set forth in Visual Artists’ Rights Act). For further discussion
of the nature of moral rights, see Matt Williams, Balancing Free Speech Interests: The
Traditional Contours of Copyright Protection and the Visual Artists’ Rights Act, 13 UCLA
ENT. L. REV. 105, 121–24 (2005).
271
See, e.g., Gilliam v. American Broad. Cos., 538 F.2d 14, 24 (2d Cir. 1976) (noting that
copyright law focuses on economic rights associated with protected works rather than on
“personal[] rights of authors”). See also Williams, supra note 270, at 123–24 (suggesting
that moral rights set forth in Visual Artists’ Rights Act may alter traditional contours of
copyright law if such rights are not regarded as subject to others’ First Amendment
interests).
272
See 17 U.S.C. § 106 (2006) (setting forth rights of copyright owner). See also Gilliam,
538 F.2d at 24 (noting economic rights focus of copyright law); cf. Suntrust Bank, 268 F.
3d at 1272 (observing that even though the Supreme Court has not given defendants
266
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139
Where federal law recognizes moral rights, it does so only as to a narrow
range of works of visual art, by virtue of the Visual Artists Rights Act (a set
of 1990 amendments to the Copyright Act).273
Therefore, to the extent that Salinger’s preliminary injunction request
was premised on moral rights grounds, it sought government action that
would alter the traditional contours of copyright. The same is likely to be
true even when the relevant copyright owner is not as controlling as
Salinger seemed to be regarding his creations but still seeks to stifle
unwelcome commentary by suing for infringement.274 Accordingly, the
Court’s language in Eldred would seem to contemplate a more prominent
role for the First Amendment in Salinger-like cases and commentarystifling cases.275 As earlier analysis has shown, copyright law’s “built-in
free speech safeguards”276 do not protect free speech interests to the same
extent that usual First Amendment principles do.277 Either a separate First
Amendment defense, or a stepped-up fair use analysis more accommodating
of First Amendment interests, is therefore in order.
V.BRINGING FAIR USE ANALYSIS MORE IN LINE WITH
THE FIRST AMENDMENT
This section focuses on how the fair use analysis can be modified in
order to make it more sensitive to First Amendment concerns. It also offers
free-speech-influenced recommendations concerning injunctive relief and
damages determinations when a plausible fair use defense fails.
Before turning to the fair use recommendations, however, we offer one
that should be obvious from our previous analysis: courts should cease their
rote mention of the notion that the distinction between ideas and expression
special latitude to borrow from a work because it happens to be famous, neither has the
Court “go[ne] so far as to grant well-known works a special, higher copyright status”); id.
at 1282 (Marcus, J., specially concurring) (noting that copyright owner cannot use
copyright law to preserve “reputation” of work or to “protect [the work’s] story from
‘taint’”).
273
17 U.S.C. § 106A (2006). Congress enacted the Visual Artists’ Rights Act (VARA) in
an effort to bring the United States into compliance with the Berne Convention, a key
international agreement regarding copyright. Berne Convention for the Protection of
Literary and Artistic Works, Paris Act, July 24, 1971, art. 6bis, 25 U.S.T. 1341, 828
U.N.T.S. 221. However, Congress declined to extend moral rights to works other than the
paintings, drawings, prints, sculptures, and photographs singled out in VARA. See 17
U.S.C. § 106A (2006).
274
See Suntrust Bank, 268 F.3d at 1274, 1276–77; id. at 1282–83 (Marcus, J., specially
concurring); Ty, Inc. v. Publ’ns, Int’l, 292 F.3d 512, 521 (7th Cir. 2002).
275
See Eldred, 537 U.S. at 221.
276
Id.
277
See supra text accompanying note 198; supra note 144.
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meaningfully safeguards First Amendment interests. The distinction
accommodates First Amendment concerns only in the very limited sense
that a far more onerous rule contemplating infringement liability for the use
of ideas and facts would be indefensible from First Amendment and public
policy perspectives. However, when a supposed First Amendment
“safeguard” applies—as this one does—only when there would be no
liability anyway,278 it does not serve a meaningful role as a free speech
protector. So, it is time to drop the fiction.
Why is a modified fair use analysis preferable to a separate First
Amendment defense? Copyright has a constitutional foundation because of
Article I, § 8’s grant of power to Congress.279 Because both copyright and
the First Amendment are rooted in the Constitution, the two must coexist in
a reasonable fashion. The frequently outcome-determinative nature of the
usual test for restrictions on fully protected noncommercial speech—
whether the speech restrictions are necessary to the fulfillment of a
compelling government purpose280—seems unlikely to lead to such
coexistence. If the test were applied as it is outside the copyright context,
free speech interests would likely prevail nearly all the time281 when the
defendant’s use of the plaintiff’s work amounted to noncommercial speech.
That state of affairs may be appropriate outside the copyright setting, but
probably does not create a suitable balance when copyright interests oppose
First Amendment interests in infringement litigation.
What if the defendant in the infringement case engaged in commercial
speech, which merits less First Amendment protection than if the speech
had been noncommercial?282 The prevailing test for assessing commercial
speech restrictions283 does not gracefully fit the copyright litigation setting,
mainly because it is designed for the direct government regulation context
278
U.S. CONST. art. I, § 8, cl. 8.
280
See, e.g., Citizens United, 130 S. Ct. at 898; Playboy, 529 U.S. at 813.
281
The government usually will fail the test, either because it cannot show a compelling
purpose (a legitimate or even substantial government purpose will not do), or because the
particular speech restriction undergoing evaluation is not truly necessary to achievement of
the compelling purpose. See, e.g., Citizens United, 130 S. Ct. at 898–911; Playboy, 529
U.S. at 813, 818, 826; Reno v. ACLU, 521 U.S. 844, 874, 876–77, 879 (1997).
282
See supra notes 198–199.
283
In a judicial challenge to government action that directly regulates the content of
nonmisleading commercial speech about a lawful activity, the action will be held not to
violate the First Amendment if the government establishes that it possessed a substantial
underlying regulatory interest and that the regulation or restriction at issue directly
advances the underlying interest in a narrowly tailored way. Cent. Hudson Gas & Elec.
Corp. v. Pub. Serv. Comm’n, 447 U.S. 557, 563–64, 566 (1980); Bd. of Trs. v. Fox, 492
U.S. 469, 480 (1989).
279
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rather than the indirect regulation setting of infringement cases.284 In the
indirect regulation context, special requirements may have to be adopted in
order to address First Amendment interests—whether arising from
commercial speech or from noncommercial speech—in ways better suited
to the relevant type of case. The defamation cases noted earlier serve as an
example of an indirect regulation setting in which the Supreme Court
devised special First Amendment-based rules in order to protect free speech
interests.285
Because the fair use doctrine already exists in copyright law and may
be a meaningful First Amendment safeguard if the relevant analysis is
modified, it makes sense to modify that analysis instead of constructing a
framework for a separate First Amendment defense. We therefore proceed
factor by factor, identifying the ways in which current fair use analysis
should be adjusted to account more suitably for free speech interests.286
A.A First Amendment-Sensitive Factor One
The first fair use factor calls for consideration of the “purpose and
character” of the defendant’s use of the copyrighted work, “including
whether such use is of a commercial nature or is for nonprofit educational
purposes.”287 Part of the foundation for a first factor analysis that would
take appropriate account of First Amendment interests can be found in the
examples Congress listed as potentially strong candidates for fair use
protection: criticism or commentary; news reporting; and teaching,
scholarship, or research.288 Given their purposes, such uses reflect important
free speech interests, even if current fair use analysis sometimes yields them
284
In the direct regulation setting, the government is the source of the speech restriction as
well as the initiator of, or an indispensable party to, the legal proceeding in which the First
Amendment issue is being addressed. See, e.g., Citizens United, 130 S. Ct. 876; Playboy,
529 U.S. 803; Reno, 521 U.S. 844. For First Amendment purposes, there can also be
indirect government action. It exists when a private party initiates a legal proceeding and
asks the court to apply a rule that could lead to the imposition of adverse legal
consequences (an injunction or a damages award) on a defendant because of the content of
the defendant’s speech. C. Edwin Baker, First Amendment Limits on Copyright, 55 VAND.
L. REV. 891, 892 (2002). See N.Y. Times Co. v. Sullivan, 376 U.S. 254, 264–65 (1964).
285
286
In Suntrust Bank, the Eleventh Circuit went beyond the traditional view that the fair use
doctrine automatically furnishes adequate protection for First Amendment interests, and
did so in part by suggesting the importance of applying the fair use factors in a manner that
would be sensitive to First Amendment concerns. See Suntrust Bank, 268 F. 3d at 1265.
However, the Suntrust Bank court did not propose a specific factor-by-factor set of
modifications. See id. We undertake that task here.
287
17 U.S.C. § 107 (2006).
288
See id.
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less protection than they deserve. Add selected principles from Campbell to
the statutory examples, and the foundation becomes relatively solid. Until
that foundation is built upon, however, the first factor will continue to be
insufficiently accommodating of the First Amendment in certain cases. The
building process will require departures from the Campbell analysis as well
as the addition of new speech-protective considerations.
Say that the defendant’s use reflected a favored purpose of the sort
singled out by Congress. If the speech interest connected with that purpose
is to be appropriately protected, the first factor’s reference to “commercial”
must be applied in a way that does not improperly jeopardize the
defendant’s chances of succeeding with the fair use defense. “Commercial”
must be applied more consistently with that term’s meaning in First
Amendment jurisprudence generally.289 Therefore, “commercial” and
“profit motive” should not be considered synonymous. Many instances of
speech reflect underlying profit motives but are classified as noncommercial
for First Amendment purposes (including books, newspapers and
magazines, movies, TV shows, songs and recordings, and visual art).290 If
the defendant’s use was noncommercial in the usual First Amendment
sense, it should be considered noncommercial under the first fair use factor.
Such a use’s important factor-one purpose—whether commentary, news
reporting, or educational—should no longer be diluted by an undue focus
on the profit motive.
If an underlying profit motive does not make a use commercial for first
factor purposes, it becomes necessary to clarify what does. We propose
using the commercial speech definition employed in non-copyright
settings.291 The Campbell dictum, in which the Court suggested that use of a
parody (or presumably other commentary) to sell a product might be viewed
less favorably in the fair use analysis than where a parody itself was being
sold,292 is a step in the right direction. This selling product versus selling
speech distinction should become an explicit part of the first factor analysis
because it can help distinguish commercial uses from noncommercial uses.
If the defendant borrowed from the copyrighted work while engaging in
speech and then sold that speech—in the form of, say, a book, article, song,
recording, work of visual art, movie, or TV show—the defendant’s use
should be classified as noncommercial. If the borrowing occurred in the
course of speech designed to sell more of the defendant’s product (e.g.,
289
See supra note 199.
See supra text accompanying note 144.
291
By this, we mean “speech that ‘does no more than propose a commercial transaction,’”
see, e.g., Va. State Bd. of Pharmacy, 425 U.S. at 762, or some definition akin to it. See
supra note 199.
292
Campbell, 510 U.S. at 585. See supra text accompanying notes 197–200.
290
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143
cereal), the usual definition of commercial speech indicates that the use
should be classified as commercial.293 The defendant’s commercial use may
then operate to undercut, though not necessarily negate, another more
“noble” purpose such as engaging in commentary.294
Although we advocate making the Campbell dictum a formal part of
the first factor analysis, our proposal for using the selling product versus
selling speech distinction differs from Campbell’s suggestion. We see the
distinction as a means of separating commercial uses from noncommercial
uses, whereas the Campbell Court identified the distinction while discussing
how the significance of a use’s commercial nature will vary from case to
case. The Court seemingly contemplated that the parody at issue was a
commercial use, but was less disadvantageous to the defendants’ fair use
arguments than it otherwise might have been because the parody itself was
being sold rather than being used to sell a product.295 Our proposal would
classify a parody such as that in Campbell as noncommercial—meaning
that it would weigh even more heavily in the user’s favor under factor one
than Campbell suggested. Accordingly, our proposal would go further to
safeguard First Amendment interests.
Once the commercial versus noncommercial determination is made as
described above, the first factor analysis should consider whether the
defendant’s use reflected mere appropriation of the copyrighted work or
was, instead, transformative or otherwise in the public interest. This portion
of the proposed analysis preserves Campbell’s designation of
transformative uses as highly valued under the fair use doctrine, while
underscoring the decision’s acknowledgment that a transformative purpose
is not a fair use prerequisite.296 The transformative use emphasis in
Campbell fits the criticism and commentary context well because such uses
typically add new creative content and employ the borrowed material for a
purpose different from that of the copyrighted work.297 Insistence on a
transformative use, however, may risk paying insufficient attention to uses
that are in the public interest and entitled to First Amendment protection.
For instance, some educational uses may not be transformative in the
sense that Campbell used the term because they may not involve adding
new content to the borrowed material, even if the educational purpose
differs from the purpose underlying the borrowed-from work.298 The same
293
See, e.g., 44 Liquormart, 517 U.S. at 488, 496; Va. State Bd. of Pharmacy, 425 U.S. at
762.
294
See 17 U.S.C. § 107 (2006); Campbell, 510 U.S. at 578–79, 585.
295
See Campbell, 510 U.S. at 572–73, 579, 584–85.
296
Id. at 579.
297
Id. at 578–79.
298
See id. at 579.
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may be true of certain news reporting uses. Yet educational and news
reporting uses, besides possessing significant speech elements, hold
profound public benefit.299 Accordingly, the first factor analysis should not
become fixated on whether the defendant’s use was transformative under a
rigid definition of that term, even though transformative uses should remain
highly valued. Other uses that offer strong public benefit but do not have an
obvious transformative component should not be discounted in the first
factor analysis.300 However, if the defendant’s use neither is transformative
nor provides a meaningful public benefit, the use should be seen as mere
appropriation of the plaintiff’s work and therefore not likely to fare well in
the factor one analysis.
If a transformative use or a use beneficial to the public is present, that
characteristic must be balanced against the use’s commercial or
noncommercial nature. The profit motive underlying a commercial use—
determined as proposed above—carries considerable weight that should
operate against the defendant in the first factor analysis unless a very
substantial degree of transformative character or public benefit is there to
offset the profit-making component. The commercial user’s uphill battle
under the first factor301 is consistent with the intermediate level of First
Amendment protection extended to commercial speech outside the
copyright setting.302
Assuming, however, that the defendant’s use is noncommercial—
determined as proposed earlier—the defendant comes to the first factor
299
See Mark A. Lemley, Property, Intellectual Property, and Free Riding, 83 TEX. L. REV.
1031, 1050–54 (2005) (asserting that information is a public good at no risk of being
depleted and that treating copyrighted works as if they were real property as opposed to
consisting of speech leads to an erroneous assumption that uses of information should be
considered unlawful free-riding). Professor Lemley laments what he sees as a trend to treat
copyright the same way real property is treated—a trend leading to overly broad
intellectual property rights that hamper creativity. Id. at 1032, 1058–61. See also
Rubenfeld, supra note 142, at 25, 28–29 (contending that because copyrighted works
consist of speech, they should not receive the same legal treatment accorded other forms of
property); 17 U.S.C. § 107 (2006) (listing educational and news reporting uses as good
candidates for fair use treatment).
300
See Tushnet, supra note 75, at 537–38, 545, 556, 586. Moreover, if a use need not be
transformative in order to be a fair use candidate, there should be no requirement that a use
be consistently transformative. In Salinger, the district court invented an ill-advised
requirement to that effect and applied it against Colting by engaging in what amounted to a
page-counting exercise. See supra notes 98, 183–186 and text accompanying.
301
Although defendants who had a commercial purpose have always encountered difficulty
under factor one, our proposal has the effect of classifying a use as commercial in a
significantly narrower range of cases than under the prevailing fair use analysis. See supra
text accompanying notes 289–295. Accordingly, the uphill battle alluded to in the text will
be faced by fewer defendants under our proposal.
302
See supra note 199.
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145
determination with a more weighty speech interest and a profit motive, if
there is one, about which there should normally be less concern.
Accordingly, that defendant should generally be able to get by with less of a
showing of offsetting transformative character or public benefit.303 The
noncommercial user’s better shot at success304 under factor one is consistent
with the greater degree of First Amendment protection extended to
noncommercial speech.305
Next, we explore the proper evaluation of commentary under the first
factor. We advocate a departure from Campbell’s rule that parody or other
commentary can be a fair use candidate only if it comments on the
borrowed-from copyrighted work.306 This rule may seem sensible as a
screening device, but it illustrates how current fair use doctrine falls short of
being a meaningful First Amendment safeguard. We propose that
303
This is not to say, however, that the profit motive is irrelevant in all noncommercial use
cases or that every noncommercial user is entitled to have the first factor resolved in his
favor. The fact-specific nature of the fair use inquiry may call for distinctions among
noncommercial users based on such considerations as how directly or indirectly they
benefit the public and how directly or indirectly they stand to make a profit. Consider, for
instance, a scenario in which a professor authorizes inclusion of portions of others’
copyrighted materials in a readings packet that students taking her class must purchase
from a copy shop. The professor does not receive any compensation based on sales of the
packet. Her only profit motive is indirect and attenuated, in the sense that if she does a
good job of providing students with a meaningful educational experience, she might
receive a better salary increase than if she did a merely adequate job. If she is sued for
infringement because of the readings packet—an example of noncommercial speech even
though it is being sold—she should fare well under the first fair use factor. Her educational
use is noncommercial in nature and of considerable benefit to the public, and there is no
direct profit motive. But what about the copy shop, which sells the readings packets and
receives the resulting profits? Under our proposal, the readings packet remains
noncommercial speech because it is an example of selling speech. Yet the copy shop has a
strong and direct profit motive. It is also only indirectly involved in furthering the
educational purpose because it merely produces copies of the materials (unlike the
professor, who selected the materials to be included). Thus, even though the readings
packet would be considered noncommercial, the copy shop is not likely to be in a favorable
position under factor one.
304
This assumes the existence of a transformative character or public benefit of the sort
provided by the uses Congress listed as potentially good candidates for fair use treatment.
See 17 U.S.C. § 107 (2006). Absent such character or benefit, even a noncommercial use
can be considered mere appropriation and thus unlikely to succeed under fair use factor
one. Consider, for example, the publishing company that produces and distributes copies of
a copyrighted novel without a license from the copyright owner to do so. Books are
noncommercial even when sold for a profit, but the publishing company’s actions in this
situation should be considered mere appropriation.
305
See supra note 198 and text accompanying; supra note 144.
306
Campbell may not have established this as an absolute rule, but its strong suggestions in
that regard effectively created such a rule. See Campbell, 510 U.S. at 580–81.
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commentary in which a defendant borrows from a copyrighted work should
be treated as transformative and a fair use candidate even if the commentary
does not criticize the work and pertains to other matters.307 The First
Amendment would normally protect such broader commentary, especially if
it were noncommercial in nature.308 It therefore should not face wholesale
exclusion from possible fair use treatment, and should be considered at least
potentially transformative for purposes of the factor one analysis.309
Absent the change just proposed, courts will continue doing what the
district court did in Salinger: struggle to decide whether commentary
pertained to the borrowed-from work or, instead, to some other matter.
Given the implicit nature of the criticism in parody and certain other forms
of commentary, courts’ decisions on this point may tend to be inconsistent
and somewhat arbitrary. This makes the screening-device nature of the
commenting-on-the-work rule problematic from a First Amendment
perspective. A court’s erroneous determination may bar the defendant from
making fair use arguments despite the presence of speech that would
otherwise receive substantial First Amendment protection.310 Of course,
elimination of the commenting-on-the-work rule would not guarantee the
defendant a win on fair use grounds. It would mean only that the screening
device would not bar the defendant from seeking fair use protection, and
that the court would have to consider the defendant’s arguments on the four
factors.
For the same reasons stated above, we advocate elimination of the
judicial distinction that regards satire as a weaker fair use candidate than
parody.311 The distinction between parody and satire is unhelpful as an
indicator of fair use eligibility because it contemplates close-to-the-line
determinations on matters of literary form.312 It is not an appealing prospect
to expect judges who may not be well-versed in such matters to make
determinations on whether parody or satire is present. Inconsistent
outcomes concerning similar instances of speech would seem an inevitable
consequence of the distinction between parody and satire. Such
inconsistency makes the distinction an unsuitable way of safeguarding First
Amendment interests because, either way, the defendant would have the
307
This change could occur through a Supreme Court decision or an amendment to the
Copyright Act.
308
309
See Thomas Cotter, Fair Use and Copyright Overenforcement, 93 IOWA L. REV. 1271,
1318 (2008).
310
311
See Campbell, 510 U.S. at 581–82. See also supra note 51 (discussing this distinction).
312
See Christina Bohannan, Copyright Harm, Foreseeability, and Fair Use, 85 WASH. U. L.
REV. 969, 1008–09 (2007).
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147
same free speech interests at stake. Outside the copyright context, the
defendant’s speech—whether parody or satire—would be entitled to full
First Amendment protection if the speech was noncommercial in nature.313
The chances of an erroneous classification, and therefore of a defendant’s
being denied an opportunity to make fair use arguments despite strong First
Amendment interests on her side, are too great. The distinction between
parody and satire should go by the wayside.314
We also propose that when a defendant borrows from a copyrighted
work in order to comment on the work’s author, such commentary should
be treated as relevant to the factor one analysis. The Salinger district court
regarded Colting’s commentary on Salinger as not especially important for
fair use purposes,315 but commentary on authors—particularly famous
ones—would normally carry substantial First Amendment protection.
Consider, as noted previously, the stern First Amendment-based fault
requirement that Salinger would have had to satisfy if he had been suing
Colting for defamation.316 It therefore seems odd that commentary on the
well-known author would not have a meaningful role to play in the
determination of whether commentary that borrowed from his work merited
fair use treatment. Accordingly, we favor consideration of such commentary
in the fair use analysis.317
Finally, we propose that in applying the first factor, courts should
consider the effects of the copyright duration extensions discussed
earlier.318 Where the borrowed-from work remains under copyright solely
because Congress extended the duration beyond what the applicable law
called for when the work’s copyright arose, courts may want to give the
defendant a favorable bump in the balancing of interests. Doing so would
help the defendant under the first factor, but would not guarantee fair use
313
Cf. David E. Shipley, A Dangerous Undertaking Indeed: Juvenile Humor, Raunchy
Jokes, Obscene Materials, and Bad Taste in Copyright, 98 KY. L.J. 517, 565–70 (2010).
But see Adrian Liu, Copyright as Quasi-Public Property: Reinterpreting the Conflict
Between Copyright and the First Amendment, 18 FORDHAM INTELL. PROP. MEDIA & ENT.
L.J. 383, 433–34 (2008) (suggesting that distinction between parody and satire is worth
maintaining). We have less faith in the distinction than Professor Liu apparently does, but
in any event, elimination of the distinction would not guarantee that every instance of satire
would amount to fair use. Rather, the satirist simply would get a chance to make her
arguments regarding the fair use factors.
315
See Salinger, 641 F. Supp. 2d at 260–63.
316
317
Apart from the First Amendment reason to consider such commentary, there is a
practical reason: the difficulty that may be encountered in separating commentary on the
author from commentary on his copyrighted work, especially when the author and the work
are entwined in the public’s mind.
318
See supra notes 236–244 and text accompanying.
314
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treatment and thus would not undermine the current duration provision.
Taking such a consideration into account would seem especially appropriate
when, as in Salinger, the allegedly infringing activities did not occur until
after the borrowed-from work would have entered the public domain if not
for the statutory duration extensions.319 The First Amendment interests
seem particularly meaningful in that context.
If this subsection’s proposals had been applied in Salinger, the first fair
use factor would have been resolved in the defendants’ favor. Their use was
noncommercial; it was suitably transformative in its commentary on the
borrowed-from work and its author (all of which we would have considered
in the analysis); and the borrowed-from work would have been in the public
domain if not for congressional extensions of copyright duration. Such an
analysis would have accounted more appropriately for the relevant First
Amendment interests.
Of course, no one fair use factor controls the outcome in any case.
Because all four factors must be considered, the following subsections
address the remaining three factors and the ways in which their application
can make suitable allowance for free speech concerns.
B.A First Amendment-Sensitive Factor Two
When courts apply the second factor—the nature of the copyrighted
work320—they frequently note that borrowing from a highly creative work
may jeopardize the defendant’s fair use chances more than would borrowing
from a largely factual work.321 The second factor can be made more
sensitive to First Amendment interests if courts place less emphasis on the
creative works versus factual works distinction when the defendant’s use
included commentary along the lines explored in the previous subsection.
Campbell is instructive in that regard. There, the Court noted that the
creative works versus factual works distinction is not particularly helpful in
parody cases because well-known creative works are logical targets of
parodists.322 We would extend Campbell’s reasoning to forms of
commentary other than parody. The likely effect would be the same as in
Campbell: a second factor that becomes insignificant in a case involving
commentary or other transformative uses. The defendant’s fair use chances
thus would not be hampered, and First Amendment interests would be
better served.
Courts can also be more accommodating of free speech interests if, in
319
17 U.S.C. § 107 (2006).
321
322
320
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applying factor two, they employ the published work versus unpublished
work distinction outlined in Harper & Row.323 The Supreme Court
concluded that because of the importance of the copyright owner’s right of
first publication, a borrowing from an unpublished copyrighted work should
normally harm the defendant’s chances of succeeding with the fair use
defense but would not be conclusive in that regard.324 A borrowing from a
published work, while not operating in the defendant’s favor, should likely
cause the second factor to be neutral (and therefore not damaging to the
defendant’s fair use prospects). Because many instances involving
commentary or other transformative purposes would be ones in which the
defendant borrowed from a published work, a published versus unpublished
focus would help factor two account for First Amendment interests.
If the approaches we urge here had been taken in Salinger, the second
factor would not have helped the defendants in the fair use analysis, but
neither would it have favored the plaintiff. Although Catcher is a highly
creative work, Colting’s borrowing reflected considerable commentary on
the widely distributed novel. Catcher’s notoriety, moreover, made it a
logical object of commentary. Under our proposal, then, the second factor
would have been deemed neutral.
C.A First Amendment-Sensitive Factor Three
The third factor requires consideration of the extent of the defendant’s
borrowing and an assessment of the importance of the portions borrowed to
the copyrighted work.325 Making this factor sufficiently accommodating of
First Amendment interests requires extension of a Campbell-approved
approach and further consideration of our first factor proposals.
Campbell recognized that if a parody of a copyrighted work is to be
effective, the parodist must be permitted to use enough of the work’s
expression, in either a qualitative or a quantitative sense, to “conjure up” the
work and enable the public to recognize what is being parodied.326 As
compared with users not engaged in parody, the parodist may be able to
borrow more expression—and more of the especially important or
recognizable expression—without the third factor operating against the
defendant. Even a borrowing of the work’s “heart” may not disadvantage
the parodist under factor three.327
We propose that the conjure-up test be extended to cases in which
323
471 U.S. 539 (1985).
Id. at 550–55.
325
See 17 U.S.C. § 107 (2006).
326
327
Id.
324
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commentary328 other than parody is present and to other cases in which the
defendant’s borrowing reflects purposes that go beyond mere appropriation.
Other commentary reflects the same sorts of speech interests present with
parody and seemingly animating the reasoning in Campbell.329 From a First
Amendment perspective, therefore, it makes sense to employ the conjure-up
test more broadly to instances in which speech interests are prominent.
In determining the extent of permissible borrowing under the conjureup test, courts should remain cognizant of the commercial versus
noncommercial classification issue and should resolve it as proposed in our
first factor recommendations.330 If the defendant’s use was noncommercial,
the defendant should receive more latitude regarding the degree of
borrowing permitted under the conjure-up test. If the defendant’s use was
commercial, the conjure-up test should still be applied—but less loosely
than where the defendant’s borrowing was noncommercial. This difference
would recognize that noncommercial speech lies at the heart of the First
Amendment.331
Although the conjure-up test contemplates that the defendant not be
permitted to borrow more than was reasonably necessary to bring the
copyrighted work to mind,332 the conjure-up test should not be considered a
least-restrictive-means approach. The defendant engaged in commentary or
another purpose going beyond mere appropriation should not be penalized
for borrowing somewhat more expression than was absolutely necessary to
conjure up the borrowed-from work. If the defendant did not go
significantly overboard in that regard, the third factor should permit
breathing room in recognition of speech interests.333
If the approach urged here had been employed in Salinger, the district
court would have been less inclined to conclude that the third factor cut
strongly against fair use. Colting’s novel was noncommercial speech that
involved significant commentary and an obvious need, given its purposes,
to borrow easily recognizable aspects of the expression in Catcher.
Therefore, reasonable latitude should have been extended to the defendants
328
By this, we mean commentary in the broader sense contemplated in our proposals
regarding the first factor. See supra text accompanying notes 306–314.
329
See Campbell, 510 U.S. at 578–81, 588–89.
330
331
See supra text accompanying note 198; supra note 143.
332
See Campbell, 510 U.S. at 588–89.
333
For essentially the same reasons noted in our factor one proposals, we regard it as
appropriate for courts applying the third factor to consider whether the borrowed-from
work remains under copyright only because of duration extensions enacted by Congress.
See supra text accompanying notes 318–319. In such an instance, the court may want to
extend somewhat more latitude to the defendant under the third factor, especially if the
defendant’s borrowing for a speech-related purpose was noncommercial in nature.
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under factor three. It is difficult to determine whether the borrowing
exceeded what that latitude would contemplate, but it is far from obvious
that the third factor should have favored Salinger.
D.A First Amendment-Sensitive Factor Four
Portions of the prevailing approach to the fourth factor—the effect, if
any, of the defendant’s “use on the potential market for or value of the
copyrighted work”334—comport with the First Amendment, but other
aspects require modification if free speech interests are to be adequately
safeguarded. Campbell set forth a speech-protective rule when the Court
stated that harm to the copyrighted work from the force and effectiveness of
the defendant’s parody does not count against the defendant in the factorfour analysis.335 The same rule, logically, should apply to forms of criticism
or commentary that do not involve parody. Lower courts should continue
heeding that message. They should also continue to conclude that the
copyright owner cannot credibly argue for control over a supposed market
for parody versions of the work or other versions that criticize it, because
such a market is not one for which the copyright owner would realistically
consider issuing licenses.336 Such a conclusion is sensible if the fair use
defense is to retain meaning and speech interests are to be protected.
We agree that factor four normally should require consideration of
harm to reasonable derivative markets that owners of copyrights on the type
of work at issue would likely pursue (even if the copyright owner in the
case before the court had not yet done so).337 However, we part company
with the prevailing analysis when it permits assumptions about markets
copyright owners typically would pursue to override facts clearly indicating
that the relevant copyright owner has no interest in pursuing those markets.
Fair use is a fact-specific inquiry, and fictions about possible exploitation of
reasonable markets should not control over facts to the contrary. Such facts
were present in Salinger, given the author’s longstanding stance against
making any use—or licensing anyone else to make a use—of the Holden
Caulfield character or of other expression in Catcher.338
The Salinger district court ignored reality when it concluded that
despite Salinger’s firm position against exploiting any and all derivative
markets, there was likely impairment of relevant markets for fourth factor
334
17 U.S.C. § 107 (2006).
Campbell, 510 U.S. at 591–92.
336
See id. at 587–88, 592–93.
337
See, e.g., id. at 592–94.
338
Salinger, 607 F.3d at 71, 74.
335
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purposes.339 To the extent that precedent dictated this favoring of fiction
over reality, the prevailing analysis should be altered. Most copyright
owners want to exploit, or at least consider exploiting, relevant derivative
markets. The usual approach of looking at reasonable markets therefore
makes sense in most cases. But in a Salinger-type case, courts should be
free to apply factor four in accordance with the facts rather than copyright
owners’ general tendencies. Without such judicial flexibility, defendants’
speech may be squelched and First Amendment interests disserved.
In applying the fourth factor, courts must also be wary of effectively
granting the copyright owner moral rights when such rights are not lawfully
available. As earlier analysis showed, Salinger seemingly wanted to
preserve the integrity of his creations and the vision he had for them, and
thus should have been seen as seeking moral rights. The district court
obliged with its decision in his favor, despite the fact that only works of
visual art—and not even all of them—are entitled to moral rights under U.S.
law.340 The court thus altered the “traditional contours”341 of copyright law
and disregarded free speech interests when it would have been especially
appropriate to apply meaningful First Amendment scrutiny. Other courts
should avoid such a mistake, an error which seems all the worse when one
considers how many more years Salinger’s work and that of other creators
from the same time period will be under copyright protection thanks to the
duration extensions enacted by Congress.342
E.Remedies When the Fair Use Defense Fails or Is Likely to Fail
In this subsection, we consider remedies issues that arise when the fair
use defense does not come to the defendant’s rescue or seems unlikely to do
so. We first address matters pertaining to injunctive relief and then
comment on damages questions, focusing in each instance on First
Amendment concerns.
Although we disagree with the Second Circuit’s conclusion that the
Salinger defendants were unlikely to succeed with their fair use defense,343
we endorse that court’s handling of the preliminary injunction issues. The
Second Circuit correctly concluded that the Supreme Court’s decision in
eBay344 should be applied to the copyright setting even though it was a
339
See supra notes 234–235, 267–276 and text accompanying.
341
342
343
Salinger, 607 F.3d 68, 83 (2nd Cir. 2010).
344
547 U.S. 388 (2006). See Samuelson & Bebenek, supra note 172, at 73–74 (arguing
prior to Second Circuit’s Salinger decision that eBay should be regarded as barring
340
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patent case and that eBay should guide preliminary injunction issuance (or
non-issuance) even though it involved a permanent injunction request.
Accordingly, the Second Circuit devised a sound test for use in preliminary
injunction determinations and properly vacated the injunction that the
district court had issued without benefit of the new standard.345 Our only
disagreement with the Second Circuit on the preliminary injunction issues
pertains to the court’s decision to rest its holding solely on eBay and not
also on the First Amendment. But that is a minor concern because, even
though the Second Circuit stated that it did not need to decide whether the
First Amendment required its approach to the preliminary injunction issues,
the court offered comments that suggested reasonable sensitivity to free
speech interests.346
For First Amendment purposes, there is particular value in the Second
Circuit’s Salinger holding that there can be no presumption of irreparable
harm when a preliminary injunction is sought—even if the defendant’s fair
use contention probably would be unsuccessful on the merits.347 Because
courts must actually consider whether irreparable harm would likely come
to the copyright owner or whether, instead, an eventual award of damages
would be an adequate remedy, speech is at far less risk of being enjoined
during pendency of the case. To a similar probable effect is the Second
Circuit’s eBay-influenced holding that the public interest must be
considered in determinations of whether to issue a preliminary injunction.348
The preemptive squelching of speech that occurred in Salinger until the
Second Circuit vacated the preliminary injunction should be less likely to
occur in future cases. Such results square with the usual First Amendment
concerns about prior restraints on speech.349
Similarly, when the copyright owner prevails at the summary judgment
stage or after trial, the court must carefully consider not only the irreparable
harm issue but also the public interest issue when deciding whether to issue
a permanent injunction.350 When coupled with eBay’s clear message that a
permanent injunction is not a mandatory remedy when the plaintiff wins,351
the standard for issuance of a permanent injunction pays due heed to First
presumption of irreparable harm in preliminary injunction determination).
345
Salinger, 607 F.3d at 76–82, 84.
346
See id. at 76, 81–83.
347
Id. at 79–80, 82.
348
Id. at 80, 82–83.
349
See Rubenfeld, supra note 142, at 6 (complaining that despite usual First Amendmentbased concern about prior restraints, courts in copyright infringement cases “issue prior
restraints . . . all the time”).
350
eBay, 547 U.S. at 391.
351
Id. at 391–95.
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Amendment concerns about enjoining speech. Perhaps the court concludes,
after applying the eBay-required standard, that a permanent injunction is
warranted. Alternatively, the court may determine that the defendant must
pay a price in the form of damages, but that the circumstances do not
demand an injunction whose operation would make speech unavailable to
the public. However the court rules on the permanent injunction question,
the requirement that the eBay standard be satisfied indicates that First
Amendment interests will have been adequately considered.
We close with comments about awards of damages when a plausible
fair use defense fails and the defendant faces liability. As defamation law
indicates, First Amendment concerns may affect the governing rules
regarding damages.352 The same should be true in copyright cases in which
the defendant is being held liable for his speech.
If monetary relief is being sought under the basic remedy of actual
damages plus the infringer’s profits,353 the court should be realistic about
the markets impaired by the defendant’s infringement, and should keep in
mind the fact-over-fiction approach to reasonable markets that we
advocated in our proposals regarding fair use factor four.354 The court
should also take a hard look at the attributable profits question, in order to
make certain that any profits the defendant must disgorge are confined to
the actual infringement and do not sweep in profits attributable to noninfringing speech. Such an approach should lead to monetary awards
adequate to compensate the copyright owner, but should keep the amounts
of those awards in check and thus operate in a manner sensitive to the
defendant’s speech interests.
If the plaintiff chooses the statutory damages option,355 the plausibility
of the defendant’s fair use arguments—even though they failed—should
make courts wary of concluding that willful infringement occurred. The
statutory damages awarded in such cases should therefore fall within the
range allowed for instances of non-willful infringement.356 The result
should be meaningful compensation to the copyright owner without an
undue chilling of the defendant’s First Amendment interests.
In any event, whether actual damages or, instead, statutory damages are
352
See Gertz, 418 U.S. at 349–50 (imposing First Amendment-based rules regarding
recoverable damages in defamation cases brought by private figure plaintiffs, in order to
guard against chilling effect of common-law rules on damages).
353
17 U.S.C. § 504 (a), (b) (2006).
354
355
17 U.S.C. § 504 (a), (c) (2006).
356
That range is a minimum of $750 to a maximum of $30,000. Id. § 504(c). If the plaintiff
can prove willful infringement, the maximum amount of statutory damages becomes
$150,000. Id.
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being sought, courts must not issue awards for supposed harms of a moral
rights-type nature when the work at issue is not a work that qualifies for
such rights. For the reasons noted earlier, according moral rights-like
protection to works not entitled to them departs from the “traditional
contours” of copyright law and cuts too deeply into defendants’ First
Amendment interests.357
VI.CONCLUSION
For too long, courts have largely avoided deciding how to
accommodate defendants’ First Amendment interests within the copyright
protection realm. The traditional view has been that no special consideration
of First Amendment interests is necessary in copyright infringement cases
because defendants’ free speech interests are adequately accounted for by
copyright’s supposed built-in safeguards: the distinction between ideas and
expression, and the fair use doctrine. As we have demonstrated, the
distinction between ideas and expression does not serve as a meaningful
protector of First Amendment interests when defendants in infringement
cases really need such a protector. That leaves the fair use doctrine, which
has the potential to operate as an effective First Amendment safeguard. The
Supreme Court’s decision in Campbell suggested some of that potential but
stopped short of making it a reality.
The recent district court and Second Circuit decisions in Salinger v.
Colting reveal that the speech protection afforded by the fair use defense is
not coextensive with the protection that the First Amendment would
provide if it were given appropriate consideration. Although the Second
Circuit appropriately vacated the district court’s preliminary injunction, the
appellate court erred in upholding the lower court’s determination that
Colting’s fair use defense was likely to fail. A key message from Salinger,
then, is one neither the district court nor the Second Circuit intended to
provide: modifications of the prevailing fair use analysis are necessary if
defendants’ free speech interests are to be suitably accommodated.
After engaging in critical analysis of Salinger, Campbell, and other fair
use decisions, we have proceeded on a factor-by-factor basis to outline and
justify a modified fair use analysis designed to make the doctrine function
more meaningfully as a First Amendment safeguard. Judicial use of our
proposed analysis would finally lend accuracy to the statement that the fair
use doctrine sufficiently safeguards defendants’ First Amendment interests.
In addition, free speech issues may still be present when a plausible fair use
defense fails and the defendant faces infringement liability. Accordingly,
we have made remedies-related observations regarding an appropriate
357
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balancing of copyright owners’ interests and defendants’ First Amendment
interests.
As Salinger indicates, copyright owners own their “rye” and are
entitled to protect it. But others’ First Amendment interests sometimes
become caught in that rye. Those interests must then be addressed
meaningfully, rather than through routine citations of the fiction that
copyright’s built-in safeguards appropriately protect free speech interests. If
adopted, the proposals set forth herein would serve to free the First
Amendment from constraints that copyright law has too long imposed.
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Biting the Hand That Feeds: Why the Attempt to
Impose Additional Performance Fees on iTunes is a
Search for Dollars Without Sense
Jesse A. Bland†
TABLE OF CONTENTS
I. INTRODUCTION ............................................................................. 158
II. BACKGROUND: THE MUSIC INDUSTRY, COPYRIGHT &
DIGITAL TECHNOLOGY ......................................................... 161
A. The Music Industry’s Fall (and iTunes’ Rise)................................... 161
B. Digital Technology: Key Terminology .............................................. 163
C. Copyright law .................................................................................... 164
1. A Utilitarian Overview of Copyright Law .................................... 164
2. Two Key Distinctions ................................................................... 165
3. Musical Compositions: Overview of Ownership & Management 167
4. Sound Recordings: Overview of Ownership & Management....... 170
5. The Public Performance Right ...................................................... 171
a. History for Musical Compositions: § 106(4) ............................ 171
b. History for Sound Recordings: § 106(6) ................................... 172
c. The Rationale for Public Performance Rights Reflects the
Utilitarian View of Copyright ................................................... 173
III. PURE DOWNLOADS DO NOT, AND SHOULD NOT,
CONSTITUTE PUBLIC PERFORMANCES UNDER THE
COPYRIGHT ACT ....................................................................... 176
A. As a Matter of Law, Pure Downloads Do Not Constitute Public
Performances .................................................................................... 176
1. Statutory Language ...................................................................... 176
2. Retailers Can Rely on Precedent: In re RealNetworks I & II ...... 177
3. Proper Statutory Interpretation Affirms the “Contemporaneous
Perception” Requirement .............................................................. 180
B. As a Matter of Policy, Downloads Should Not Constitute Public

First-Prize Winner, 2010 Local ASCAP Nathan Burkan Memorial Writing Competition.
Currently under consideration as a national finalist.
†
J.D. Candidate, Vanderbilt University Law School, 2011; B.B.A., Finance, University of
Georgia, 2007. The author would like to thank his family for their love and support, the
editors of the Journal, and Professor Daniel Gervais for his generous assistance in the
development of this note.
158
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Performances .................................................................................... 183
1. Performance Licenses for Downloads Enables “Double Dipping”
....................................................................................................... 183
2. Any Performance That Occurs Has No Economic Value ............. 184
IV. THIRTY-SECOND PREVIEWS LIKELY CONSTITUTE PUBLIC
PERFORMANCES BUT SHOULD BE EXEMPT FROM
LICENSING .................................................................................. 185
A. As Streaming Transmissions, iTunes’ Song Previews Likely Implicate
the Public Performance Right for Musical Compositions and Sound
Recordings ........................................................................................ 185
B. Equitable Considerations and Proper Legal Analysis Demand that
iTunes Should Be Given the Same Exemption Currently Available to
Brick-and-Mortar Music Stores ........................................................ 186
1. Equitable Considerations Favor an Exemption ............................. 186
2. Section 110 Should Apply to iTunes ............................................ 187
C. The Current Act Would Apply the Counter-Productive “Interactive
Service” Provider Label to iTunes and Produce Inefficient Results 189
1. The Requirements of an “Interactive Service” Provider ............... 190
2. The Interactive/Non-Interactive Distinction Does not Make Sense
Here ............................................................................................... 191
V. CONGRESS SHOULD AMEND THE COPYRIGHT ACT .......... 193
A. Pure Downloads: Congress Should Amend The Definition of
“Perform” ......................................................................................... 193
B. Thirty-Second Samples: Congress Should Amend Section 114 ........ 195
VI. CONCLUSION................................................................................. 197
I. INTRODUCTION
In 1958, Johnny Cash released a single entitled “Guess Things Happen
That Way.”1 The single soared to the top of the Billboard country chart,
spending eight weeks at number one.2 Since then, though, the song had
garnered little attention, standing in the shadows of classics like “Ring of
Fire”3 and “I Walk the Line.”4 That all changed in 2010 when a seventy1
JOHNNY CASH, Guess Things Happen That Way, on SINGS THE SONGS THAT MADE HIM
FAMOUS (Sun Records 1958).
2
JOEL WHITBURN, THE BILLBOARD BOOK OF TOP 40 COUNTRY HITS: 1944-2006 74
(2004).
3
JOHNNY CASH, Ring of Fire, on RING OF FIRE: THE BEST OF JOHNNY CASH (Columbia
Records 1963).
4
JOHNNY CASH, I Walk the Line, on JOHNNY CASH WITH HIS HOT AND BLUE GUITAR (Sun
Records 1957).
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159
one-year old grandfather from Woodstock, Georgia, purchased and
downloaded the track from iTunes. Ironically, “Guess Things Happen That
Way” turned out to be the ten-billionth song downloaded from iTunes since
the retailer’s inception and, as a result, Louie Sulcer unknowingly won
Apple’s contest promoting the historic download, not to mention a tenthousand-dollar gift card.5 Sulcer had logged-on to his iTunes account in
search of songs to include in a mix he was putting together for his son when
he stumbled upon the track.6 Having never heard the song, though, Sulcer
first listened to a thirty-second preview for free. According to Sulcer, it was
this thirty-second preview that led him to purchase the song: “I really liked
it. It had some really good pickin’ in it. So that’s how I got to that song.”7
While many celebrated the historic download as a sign of Apple’s
success and promise for the future of digital music sales, a select group of
the music industry likely grumbled. This group—made up largely of music
publishers, composers, and performance rights organizations—is
demanding the right to collect performance fees from iTunes and other
online retailers for many of the steps involved in the typical download
process.8 As the law stands today, iTunes pays multiple licenses for the
reproduction and distribution rights associated with each song downloaded,
but it does not pay any additional performance right licenses for the
downloads themselves or the thirty-second song previews. But now the
American Society of Composers, Authors and Publishers (“ASCAP”),
Broadcast Music Inc. (“BMI”), and other performing-rights groups want to
collect performance fees from three additional sources: downloads of
music; downloads of films and TV shows, and thirty-second song samples.9
In fact, according to David Israelite, president and CEO of the National
Music Publishers Association (“NMPA”), the group has begun lobbying
Congress to pass legislation that would require anyone who sells a
5
Daniel Kreps, iTunes Prize Winner to Steve Jobs: “Yeah Right, Who Is This Really?”,
ROLLING STONE (Feb. 25, 2010), available at
http://www.rollingstone.com/rockdaily/index.php/2010/02/25/itunes-prize-winner-to-stevejobs-yeah-right-who-is-this-really/; see also Leah Greenblatt, EW Talks to the Georgia
Grandfather Who Bought the 10 Billionth Song on iTunes: “I’ve Never Won Anything!”
ENTERTAINMENT WEEKLY (Feb. 25, 2010), available at http://musicmix.ew.com/2010/02/25/itunes-10-billionth-download-johnny-cash/ (quoting Sulcer as
saying, “I was just checking iTunes, listening to those little twenty or thirty second clips,
and I found this one. It has some good pickin’ in it!”).
6
See Kreps, supra note 5.
7
Id.
8
Greg Sandoval, Music Publishers: iTunes Not Paying Fair Share, CNET (Sep. 17, 2009),
http://news.cnet.com/8301-1023_3-10355448-93.html.
9
Id.
160
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download to pay a performance fee.10
These groups are not simply asking for a bigger slice of the licensing
“pie,” so to speak. They are demanding a bigger pie. But such a result
remains unlikely, as it rests on the erroneous assumption that iTunes, if
forced to pay additional performance fees, would not reconsider its overall
fee structure and adjust other cash flows accordingly. In other words, new
payments may simply result in the realignment of total financial flows from
iTunes, but not more total copyright money. The same can be said even if
their erroneous assumption holds. In fact, the harsh results produced under
this scenario would prove even more costly to the continuing vitality of the
music industry. If online retailers’ fees increase, the additional costs will
ultimately shift to consumers like Louie Sulcer. Thus, while such a regime
would ostensibly lead to more copyright royalties, it would actually shift
consumers away from legally purchasing digital music and stifle the growth
of an innovative, beneficial distribution model. Given the importance of
digital sales for the future of music, this outcome is nonsensical. More
importantly, the additional fees are completely unwarranted.
This development brings to the surface some of the blurrier issues
surrounding the music industry’s evolution into the digital medium. Further
analysis of these issues reveals statutory provisions that conflict with
practical realities and the underlying purpose of copyright law. And because
this battle takes place in the context of the music industry, it implicates a
complex web of competing interests. At its core, though, this demand
reflects a battle for control by industry groups that refuse to acknowledge or
leverage the potential of digital retailers like iTunes. As a result, the entire
industry continues to marginalize itself—at its own expense, no less—from
the good graces of public perception.
This paper will address two of the three sources from which this group
is seeking to collect public performance fees: music downloads and the
thirty-second song samples provided for free by online retailers. This paper
will conduct a two-pronged analysis. First, it will discuss whether each
source implicates the public performance right for musical compositions
and sound recordings under current law. Second, it will approach the issues
from a policy standpoint, discussing whether each respective source should
implicate the public performance right and, thus, require additional
licensing. This analysis will show that imposing additional fees for these
alleged “performances” would undermine the utilitarian foundation upon
which American copyright rests. Along the way, this paper will argue that,
regardless of whether a download or a thirty-second sample technically
constitutes a public performance of either a musical composition or sound
10
Id.
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161
recording under the current Copyright Act, imposing additional
performance fees on iTunes for these transmissions would create an
inefficient, nonsensical, and counter-productive result. Accordingly, iTunes
and other online retailers should not be subject to these additional fees.
Finally, to ensure this result, I propose several legislative amendments as a
solution to a problem that requires a delicate balance between artistic
protection and market realities.
II. BACKGROUND: THE MUSIC INDUSTRY, COPYRIGHT &
DIGITAL TECHNOLOGY
A.The Music Industry’s Fall (and iTunes’ Rise)
Describing the music industry’s rapid decline requires a look at the
statistics. Revenues are down. Way down. To put things in perspective, in
1999 total revenue from U.S. music sales and licensing topped $14.6
billion. That figure plunged to $6.3 billion in 2009.11 Physical and digital
sales combined for 373.9 million albums sold in 2009, down 12.7% from
the 428.4 million sold in 2008.12 Comparing the 2009 numbers with those
from 2000, a year in which U.S. consumers bought 785.1 million albums,13
reveals the full extent of the industry’s staggering fall: over the past decade,
album sales and industry revenues have declined by more than fifty percent.
But that only tells part of the story. Also relevant is the current shift
toward a digital distribution model. While the industry’s traditional business
model revolved around tangible record sales in so-called “brick and mortar”
retail stores, with the digital age came a revolutionary idea: digital sales via
the internet. In fact, the industry has already begun the historical and
inevitable shift toward digital distribution. As of 2009—a year in which
11
David Goldman, Music’s Lost Decade: Sales Cut in Half, CNNMONEY.COM (Feb. 3,
2010),
http://money.cnn.com/2010/02/02/news/companies/napster_music_industry/index.htm.
12
Daniel Kreps, 2009 Wrap-Up: Music Purchases Up, Album Sales Down, ROLLING
STONE (Jan. 7, 2010), available at
http://www.rollingstone.com/rockdaily/index.php/2010/01/07/2009-wrap-up-musicpurchases-up-album-sales-down/; see also International Federation of the Phonographic
Industry (“IFPI”), IFPI Digital Music Report 2010, at 10, available at
http://www.ifpi.org/content/library/DMR2010.pdf (noting that “the increase in the music
industry’s digital sales is not offsetting the sharp decline in sales of physical formats.
Overall, global music sales fell for the tenth year running in 2009. Full year figures were
not available at the time of going to press, but digital and physical global sales in the first
half of 2009 were down 12%, excluding performance rights income.”).
13
Brian Hiatt & Evan Serpick, The Record Industry’s Decline, ROLLING STONE (June 28,
2007), available at http://msl1.mit.edu/furdlog/docs/2007-0619_rollingstone_industry_decline.pdf.
162
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global digital music trade revenues rose 12% to over $4.2 billion—almost
thirty percent of all recorded music industry revenues worldwide are now
coming from digital channels.14 When compared to the rapid decline in
physical record sales, this growth becomes even more pronounced. In 2008,
total recorded music sales in the United States declined by more than 18%
over 2007 numbers, due to a 31.2% drop-off in physical music sales.15
Digital record sales, on the other hand, increased by 16.5% and reached
almost $1.8 billion.16 This trend led at least one industry analyst to predict,
“digital music sales will nearly equal CD sales by the end of 2010.”17
The explosive growth of digital music sales can be largely attributed to
one computer application: iTunes, which allows users to purchase,
download, store, and organize multiple forms of digital media on their
computers.18 Unveiled by Apple in 2001,19 iTunes has quickly become the
largest music retailer in the United States and now accounts for over 25% of
all music sold.20 Its dominance in the digital music arena is staggering:
consumer downloads from iTunes comprised 69% of the digital music
market in the first half of 2009.21 In an industry plagued by revenue erosion
at the hands of illegal file-sharing, iTunes stands as a beacon of hope,
providing the means to capitalize on the digital age. In fact, Apple CEO
Steve Jobs described the launch of iTunes as “the birth of legal
downloading,”22 and shed light on its role in the market by proclaiming,
“[w]e’re going to fight illegal downloading by competing with it. We’re not
14
See Press Release, IFPI, IFPI Publishes 2010 Digital Music Report 2010 (Jan. 21, 2010),
available at http://www.ifpi.org/content/section_resources/dmr2010.html.
15
IFPI 2008 Recorded Music Data, available at
http://www.ifpi.org/content/library/Recorded-Music-Sales-2008.pdf.
16
Id.
17
Press Release, The NPD Group, Digital Music Increases Share of Overall Music Sales
Volume in the U.S. (Aug. 18, 2009), available at
http://www.npd.com/press/releases/press_090818.html.
18
Technically, the iTunes bundle consists of a few separate applications and functions.
iTunes is a proprietary digital media player application used for playing and organizing
digital music and video files. The program is also an interface to manage the contents on
Apple's popular iPod range of digital media players. There is also the iTunes Store, the
online retail vehicle through which users purchase digital music. For the purposes of this
paper, though, I use “iTunes” to refer to the combination of each ancillary application.
19
Press Release, Apple, Apple Introduces iTunes—World’s Best and Easiest to Use
Jukebox Software (Jan. 9, 2001), available at
http://www.apple.com/pr/library/2001/jan/09itunes.html.
20
See supra note 17.
21
Id.
22
See John Paczkowski, iTunes: 10 Billion Songs Sold in Less Than Seven Years, DIGITAL
DAILY (Feb. 24, 2010), http://digitaldaily.allthingsd.com/20100224/apples-itunes-thanks10-billion/.
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going to sue it. We’re not going to ignore it. We’re going to compete with
it.”23
To put these statistics in the proper perspective, one must appreciate
the complexities of the music industry itself. Throughout this paper, I will
use “the music industry” to refer to the overarching collection of entities
that holds distinct—and often divergent—interests in the commercial
market for music. A clear distinction should be made between the group of
entities most often associated with the term “the music industry”—the
record labels—and the group demanding additional performance licensing
fees from iTunes—performance rights organizations (“PROs”). While often
“what is good for the goose is good for the gander,” such will not likely be
the case in the issue at hand. That is, while the record labels will clearly
benefit from iTunes’ ascension, the PROs, relative to the labels, clearly will
not. This is due to the way in which cash flows are determined and allocated
among the complex web of competing rights in the music context.24 But this
is not necessarily an undesirable result as long as the industry as a whole
benefits and copyright’s goals are furthered. More importantly, the law
should not seek to appease a group of the music industry at the expense of
undermining the historical purpose of the public performance right and,
more broadly, the utilitarian notions that remain so central to America’s
view of copyright.
B.Digital Technology: Key Terminology
Before analyzing the legal implications of iTunes’ digital media
transfers, a distinction must be made between the two relevant digital
transmissions:25 “pure” downloads and streaming transmissions.
Downloading “is the transmission of a digital file over the internet from a
server computer, which hosts the file, to a client computer, which receives a
copy of the file during the download . . . .” Once saved, the file can be
audibly played by the client and copied to various portable devices.26 The
key is that the files are copied completely to the user's hard drive for later
playback.27 What makes the download “pure” is the fact that the file cannot
be played until fully downloaded.28
23
Id.
See infra Part II(C).
25
So-called “progressive” downloads, which allow users to watch or listen to media as it is
being downloaded, fall outside the scope of this paper. In any event, iTunes does not
currently enable such transmissions.
26
U.S. v. ASCAP, 485 F. Supp. 2d 438, 440 (S.D.N.Y. 2007) (internal citations omitted).
27
See Matt Jackson, From Broadcast to Webcast: Copyright Law and Streaming Media, 11
TEX. INTELL. PROP. L.J. 447, 450 (2003).
28
See id.
24
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Streaming is different in two respects. First, it “allows the real-time (or
near real-time) playing of the song,”29 and second, it “does not result in the
creation of a permanent audio file on the client computer. Rather, a constant
link is maintained between the server and the client until playing of the song
is completed, at which time replay of the song is not possible without
streaming it again.”30
C.Copyright Law
1.A Utilitarian Overview of Copyright Law
In the United States, copyright law begins with the Constitution, which
vests Congress with the power to “promote the Progress of Science and
useful Arts, by securing for limited Times to Authors and Inventors the
exclusive Right to their respective Writings and Discoveries.”31 As the
constitutional grant makes clear, the United States takes a utilitarian view
on copyright. That is, Congress is to promote a social benefit—here, “the
progress of science and useful arts”—by drafting laws that incentivize
creativity and innovation. To be sure, copyright does seek to protect
“authors”32 by granting them a set of exclusive rights in their works. But it
only grants these temporary monopolies as a means to an end: the
maximization of social welfare. Thus, “private reward is justified only if, on
balance, that reward works a net benefit to society.”33 The Supreme Court
has noted that the limited scope of copyright “reflects a balance of
competing claims upon the public interest: Creative work is to be
encouraged and rewarded, but private motivation must ultimately serve the
cause of promoting broad public availability of literature, music, and the
other arts.”34
As noted, federal copyright law does not provide authors with a single,
inseparable right, but instead vests them with a bundle of distinct, exclusive
rights.35 This “bundle” includes the following exclusive rights:
29
ASCAP, 485 F. Supp. 2d at 442.
Id.
31
U.S. CONST., art. I, § 8, cl. 8.
32
See Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58 (1884) (defining "author"
in the constitutional sense to be "he to whom anything owes its origin; originator; maker").
33
Sara K. Stadler, Performance Values, 83 NOTRE DAME L. REV. 697, 728 (2008).
34
Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975).
35
See 17 U.S.C. § 106 (2009); H.R. REP. NO. 94-1476, at 12 (1976) (“The five
fundamental rights that the bill gives to copyright owners—the exclusive rights of
reproduction, adaptation, publication, performance, and display—are stated generally in
section 106. These exclusive rights, which comprise the so-called ‘bundle of rights’ that is
a copyright, are cumulative and may overlap in some cases. Each of the five enumerated
30
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reproduction,36 adaptation,37 publication,38 performance,39 and display.40
Each of these exclusive rights serves its own unique purpose in furthering
the constitutional mandate. But at times these rights overlap. Accordingly,
“[a]s a general matter, the Copyright Act is clear that when use of a
copyrighted work implicates more than one of that work’s rights, the user
must license each right individually.”41 This requirement flows from the
utilitarian view of copyright and simply reflects the idea that users attribute
independent value to each potential use of a work and, therefore, should
compensate copyright holders accordingly if a particular use implicates
distinct rights. However, while this requirement made sense in an analog era
where the exclusive rights fell neatly into distinct categories, it has been
criticized as disconnected from, and inapplicable to, the digital age.42 As
discussed below, digital transmissions—purely because of the technology
involved—tend to converge and conflate mechanical and performance
rights. This process, in turn, erodes the economic distinctions that justified
requiring separate licenses for overlapping rights in the first place.
2.Two Key Distinctions
The Copyright Act does not grant all the enumerated exclusive rights
found in section 106 to all copyrightable works found in section 102(a).43
rights may be subdivided indefinitely and . . . each subdivision of an exclusive right may be
owned and enforced separately”).
36
17 U.S.C. § 106(1) (2009).
37
Id. § 106(2). This is also commonly referred to as the “derivative works” right.
38
Id. § 106(3).
39
Id. § 106(4).
40
Id. § 106(5).
41
W. Johnathan Cardi, Über-Middleman: Reshaping the Broken Landscape of Music
Copyright, 92 IOWA L. REV., 835, 852 (2007) (noting that, “[f]or example, if a theater
company wishes to perform the musical Rent and in conjunction with that performance
also wishes to print the lyrics of the score in the playbill, then the company must obtain
both a performance license and a reproduction license”).
42
See, e.g., Jonah M. Knobler, Performance Anxiety: The Internet and Copyright’s
Vanishing Performance/Distribution Distinction, 25 CARDOZO ARTS & ENT. L.J. 531, 578
(2007) (arguing that “the traditionally intuitive and useful semantic distinction between
‘performance’ and ‘distribution’ does not translate readily, or particularly meaningfully, to
the internet context at all”); see also 2-8 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER
ON COPYRIGHT § 8.24 (Matthew Bender, Rev. Ed. 2009).
43
17 U.S.C. § 102(a) (2009). The following categories comprise the subject matter of
copyright under the Copyright Act of 1976: "(1) literary works; (2) musical works,
including any accompanying words; (3) dramatic works, including any accompanying
music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural
works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8)
architectural works.” Id.
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Instead, each category carries its own unique set of exclusive rights. The
situation is especially complex in the musical context, where the final
product—the song—actually consists of two separate copyrightable works:
“musical works” (or “musical compositions”)44 and “sound recordings.”45
And while the Act does not define the term “musical works,”46 it defines
“sound recordings” as “works that result from the fixation of a series of
musical, spoken, or other sounds . . . regardless of the nature of the material
objects, such as disks, tapes, or other phonorecords, in which they are
embodied.”47 Thus, a sound recording represents the underlying musical
composition transposed into aural form.48 One may ask why such a
distinction exists. In fact, the Supreme Court did not recognize the
difference until the early twentieth century.49
Today, however, the distinction clearly does matter, as it is often the
case that two separate individuals own the copyright in each constituent
element.50 In fact, as noted below, though the performing artist sometimes
holds the copyright in the sound recording, the record company usually
holds title to this right.51 On the other hand, a songwriter or publishing
44
See id. at § 102(a)(2).
See id. at § 102(a)(7).
46
See NIMMER & NIMMER, supra note 42, at § 2.05 (noting the term was left undefined
because it was thought to have a “fairly settled” meaning).
47
17 U.S.C. § 101 (2009).
48
See NIMMER & NIMMER, supra note 42, at § 2.10. Note that the underlying work can also
be either a dramatic or literary work transposed into aural form. However, for the purposes
of this paper, all underlying works will be assumed to be musical compositions. Further, a
sound recording should not be confused with a “phonorecord,” the material object in which
the sound is embodied. See § 101 (defining “phonorecord” as “material objects in which
sounds, other than those accompanying a motion picture or other audiovisual work, are
fixed by any method now known or later developed, and from which the sounds can be
perceived, reproduced, or otherwise communicated, either directly or with the aid of a
machine or device. The term ‘phonorecords’ includes the material object in which the
sounds are first fixed.”).
49
See White-Smith Music Publ'g Co. v. Apollo Co., 209 U.S. 1, 18 (1908) (holding that the
perforated rolls used to make the sounds of a musical work in a mechanical piano are
separate from the underlying musical work); Tomomi Harkey, Bonneville International
Corp. v. Peters: Considering Copyright Rules to Facilitate Licensing for Webcasting, 20
BERKELEY TECH. L.J. 625, 633 (2005).
50
See NIMMER & NIMMER, supra note 42, at § 2.10 [A][3] (citing H.R. REP. NO. 92-487
(1971); SEN. REP. NO. 92-72 (1971)) (“On the question of ownership of sound recording
copyrights, the Committee Reports relating to the original Sound Recording Amendment of
1971, state: ‘As in the case of motion pictures, the bill does not fix the authorship, or the
resulting ownership of sound recordings, but leaves these matters to the employment
relationship and bargaining among the interests involved.’”).
51
Christopher D. Abramson, Note, Digital Sampling and the Recording Musician: A
Proposal for Legislative Protection, 74 N.Y.U. L. REV. 1660, 1669–70 (1999).
45
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167
company typically holds the copyright in the underlying musical
composition.52 The distinction is also relevant vis-à-vis the public
performance right because unlike musical compositions, sound recordings
only enjoy a limited public performance right.53 The sections below detail
the different rights associated with musical compositions and sound
recordings, as well as how these respective rights are managed.
To understand the management systems in place, though, another
distinction—that between mechanical and performance rights—should be
addressed. Section 106(1) of the current Copyright Act gives the copyright
holder the exclusive right of reproduction.54 Section 106(3) affords the
exclusive right of distribution.55 Taken together, these two rights are
commonly referred to as “mechanical rights,” which give the copyright
holder the right to make and distribute musical compositions on
phonorecords (i.e., compact discs (“CDs”), records, tapes, and certain
digital configurations).56 Mechanical rights are distinct from performance
rights, which must be obtained by a party seeking to broadcast or perform
the song publicly. As explained below, music retailers such as iTunes who
provide download services are required to obtain a mechanical license for
the reproduction and distribution of both the musical composition and the
sound recording.
3.Musical Compositions: Overview of Ownership & Management
As the original “authors” of musical compositions, songwriters initially
own the copyright in these works, which carries with it the following
exclusive rights: (1) to reproduce the work, (2) “to prepare derivative
works” based upon it, (3) “to distribute copies or phonorecords” of the
work, (4) to perform the work publicly, and (5) to display the work
publicly.57 The key word, though, is initially. Songwriters have traditionally
relied on music publishers for a number of key commercial services.58 In
52
Id.
See infra Part II(C)(5).
54
17 U.S.C. § 106(1) (2009).
55
Id. § 106(1).
56
See N. Jansen Calamita, Note, Coming to Terms with the Celestial Jukebox: Keeping the
Sound Recording Copyright Viable in the Digital Age, 74 B.U. L. REV. 505, 526 n.115
(1994);
see
also
Harry
Fox
Agency,
Frequently
Asked
Questions,
http://www.harryfox.com/public/FAQ.jsp.
57
See 17 U.S.C. § 106(1)–(5) (2009).
58
See Cardi, supra note 41, at 840 (“For many years, publishers played a major role in
commercializing the musical works composed by their principals. Publishers located and
engaged artists to perform a songwriter’s composition. They secured recording deals with
major record labels and sought diverse sources of royalty revenues, from nightclub
53
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return, the artists would sign the standard publishing agreement, which
“required the songwriter to assign ownership of the copyrights in his songs
to the publisher, retaining only the right to fifty percent of all royalties
generated.”59
However, as individual music publishers have seen their commercial
relevance diminish considerably over recent years,60 most mechanical and
performance rights have been assigned to or acquired by two sets of
copyright-licensing collectives. Mechanical licensing is managed by agents
like the Harry Fox Agency (“HFA”). Established in 1927 by the NMPA,
HFA represents over 37,000 music publishing catalogs and 160,000
songwriters, issuing licenses and collecting and distributing the associated
royalties.61 In addition to being the foremost mechanical licensing agent in
the U.S., HFA also provides collection and monitoring services to its
publisher clients. In return for these services, HFA receives an 8.75%
commission on all royalties distributed.62 Under the current Act, mechanical
rights are subject to compulsory licensing, which means that once a
copyright owner authorizes the distribution of phonorecords of a musical
work to the public, then any member of the public may reproduce and
distribute that work without obtaining permission from the copyright owner
so long as he pays the compulsory mechanical license.63 Further, the
applicable rate is statutorily determined.64 The current rate is 9.1 cents per
song, regardless of whether customers buy the song as a digital track online
or as a tangible record in a retail store.65 In practice, however, labels do not
performances to television commercials. Publishers also promoted the songs of their
writers, serving as street barkers in the early days of New York’s Tin Pan Alley, and in
later years ensuring broad exposure by means of bribes known as “payola” to radio
stations, record labels, and bands. Publishers also served as licensing agents, issuing
licenses for various uses and collecting and distributing the resulting royalties.”).
59
Id.
60
See id. at 841 (“Over the twentieth century, the role of music publishers changed
significantly. With the rise of the singer-songwriter and the dwindling market for sheet
music, the publisher’s role as promoter and entrepreneur diminished. The publisher’s
function is now primarily that of royalty-collector and bookkeeper. Nevertheless,
publishers still issue a not-insubstantial number of licenses (including some mechanical
licenses), and they remain the primary issuer of ‘synchronization licenses’—licenses for
the use of a song in an audiovisual work such as a television show, movie, or commercial.
Thus, music publishers remain significant industry players and necessary contacts for the
licensing of musical works in modern media.”).
61
Harry Fox Agency, About HFA, http://www.harryfox.com/public/AboutHFA.jsp.
62
Cardi, supra note 41, at 842.
63
See 17 U.S.C. § 115(a)(1) (2009).
64
See 17 U.S.C. § 115(c)(3) (2009).
65
See U.S. Copyright Office, Mechanical License Royalty Rates,
http://www.copyright.gov/carp/m200a.html.
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necessarily pay this amount, as the rate negotiated by HFA can be lower
than the statutory rate.66
The licensing of performance rights, on the other hand, is handled by
three PROs: ASCAP, BMI, and the Society of European Stage Authors &
Composers (“SESAC”).67 Through an agreement, the music publisher
grants the PRO the right to license all of the songs controlled by the music
publisher.68 The PRO then adds these songs to its own “repertoire,” which
consists of all the songs from the myriad songwriters and music publishers
that have previously entered into such agreements.69 For a fee that typically
ranges from 17–23%, these organizations grant blanket licenses to massperformance licensees such as radio broadcasters (both streaming internet
and traditional terrestrial), television and cable networks, restaurants, and
bars.70 For example, a radio station would go to ASCAP and pay an annual
fee for a blanket license to publicly perform an unlimited number of songs
from ASCAP’s entire repertoire an unlimited number of times. ASCAP
would subtract its fee, then distribute the remainder of the royalties to the
respective music publishers and songwriters on a 50/50 basis, regardless of
the agreement between the two.71 In fact, the distribution of royalties serves
as a major distinction between HFA and the PROs: HFA pays the
publishers, while the PROs pay the songwriters directly, regardless of
whether they previously assigned their interests to publishers.72
66
See Harry Fox Agency, Licensing General FAQ,
http://www.harryfox.com/public/Licensing-GeneralFAQ.jsp#29.
67
See Cardi, supra note 41, 843–44. Respective market shares are: ASCAP, 54%; BMI, 43
%; SESAC, 3%.
68
DONALD S. PASSMAN, ALL YOU NEED TO KNOW ABOUT THE MUSIC BUSINESS 225 (Free
Press 6th ed. 2006) (1994).
69
In accordance with a consent decree however, the assignment to the PRO is a
nonexclusive license, which means the songwriters and music publishers may also
negotiate nonexclusive licenses directly with users, though this is seldom done. See United
States v. ASCAP, 1941 Trade Cas. (CCH) ¶ 56,104, at 405 (S.D.N.Y. 1941); see also Neil
Conley, The Future of Licensing Music Online: The Role of Collective Rights
Organizations and the Effect of Territoriality, 25 J. MARSHALL J. COMPUTER & INFO. L.
409, 412 (2008) (citing AL KOHN & BOB KOHN, KOHN ON MUSIC LICENSING 1312 (3d ed.
2002)).
70
See Cardi, supra note 41, at 844–46.
71
See KOHN & KOHN, supra note 69, at 876. To determine how much each songwriter or
publisher should receive for a given copyright, the PRO will divvy up the proceeds of its
blanket licenses according to a very complicated process. See id. at 924.
72
See ASCAP, The ASCAP Payment System,
http://www.ascap.com/about/payment/pdf/paymentSystem/ASCAP_PaymentSystem.pdf
(“As a condition of ASCAP membership, all writer and publisher members agree that, even
in work-for-hire situations, the writer and not the employer will be paid the writer’s share
of ASCAP performing rights royalties. In addition, ASCAP’s Articles of Association
provide that, with only very limited exceptions unrelated to work-for-hire situations,
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4.Sound Recordings: Overview of Ownership & Management
Though a performing artist is considered the “author” of a sound
recording73—and thus, the initial owner of the relevant exclusive rights
under the Act—copyrights to sound recordings are generally held by record
labels. Most performing artists contract with record labels to produce their
music.74 As a result of the relatively disparate bargaining powers involved,
“labels typically claim exclusive ownership in musical sound recordings
through work-for-hire agreements and assignments of ownership from the
performing artists, producers, and technicians whose creative input makes
the sound recording copyrightable.”75
Mechanical rights for sound recordings are managed much the same
way as their underlying musical compositions. In 1995, the DPRA made the
compulsory mechanical license regime applicable to “digital phonorecord
deliveries,” which essentially means music files that are permanently
downloaded to the user’s computer.76 In fact, HFA now issues mechanical
licenses for audio-only, permanent digital downloads.77
Performance rights in sound recordings are managed by
SoundExchange, a non-profit PRO that collects statutory royalties from
satellite radio, internet radio, cable TV music channels, and similar
platforms for streaming sound recordings.78 SoundExchange does not,
however, provide licenses for so-called “interactive” performances of sound
recordings (e.g. “on-demand” services that allow the listener to select the
writer’s royalties ‘shall not be sold or otherwise disposed of.’ Hence, subject only to those
very limited exceptions, ASCAP will not honor an irrevocable assignment of writer’s
royalties but will, notwithstanding such an assignment, pay writer’s royalties only and
directly to the writer member-in-interest.”).
73
Actual ownership is often more nuanced. For example, producers or sound engineers can
be, and usually are, considered co-authors of the sound recording. In fact, Congress
explicitly intended this result. See H.R. REP. NO. 94-1476, at 8 (1976) (“The copyrightable
elements of a sound recording will usually, though not always, involve ‘authorship’ both
on the part of the performers whose performance is captured and on the part of the record
producer responsible for setting up the recording session, capturing and electronically
processing the sounds, and compiling and editing them to make a final sound recording.”).
74
See Andrey Spektor, How “Choruss” Can Turn Into a Cacophony: The Record
Industry’s Stranglehold on the Future of Music Business, 16 RICH. J. L. & TECH. 3, 18
(2009).
75
See Cardi, supra note 41, at 848.
76
Technically, “each individual delivery of a phonorecord by digital transmission of a
sound recording which results in a specifically identifiable reproduction by or for any
transmission recipient of a phonorecord of that sound recording . . . ” 17 U.S.C. § 115(d)
(2009).
77
Harry Fox Agency, Digital Licensing,
http://www.harryfox.com/public/DigitalLicensing.jsp#19.
78
See SoundExchange, http://www.soundexchange.com/.
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tracks they wish to listen to and/or the order in which they wish to hear
them).79 Instead, licenses for interactive performances of sound recordings
must be obtained directly from the copyright holder.80 The Copyright
Royalty Board, which is appointed by The U.S. Library of Congress, has
entrusted SoundExchange as the sole entity in the United States to collect
and distribute these digital performance royalties on behalf of featured
recording artists, master rights owners (like record labels), and independent
artists who record and own their masters.81
5.The Public Performance Right
Section 106(4) grants copyright holders of the underlying musical
composition the exclusive right to perform, or authorize to perform, a work
publicly, whether for profit or not.82 Two things must be proven in order to
implicate this right: first, there obviously must be an unauthorized
“performance” of that work by someone other than the copyright holder;
and second, the performance must be made “publicly.” In-depth statutory
analysis of this right is provided in Part III below. Sound recordings receive
their public performance right from Section 106(6), which grants the
exclusive right “to perform the copyrighted work publicly by means of a
digital audio transmission.”83 As discussed below, though, the clause “by
means a digital audio transmission” greatly restricts the scope of this right.
But before detailing the scope of each respective right, we should examine
the history and purpose of the public performance right in American
copyright law.
a.History for Musical Compositions: § 106(4)
Copyright holders did not enjoy a performance right until the midnineteenth century.84 Up to that point, they only enjoyed publication
rights—that is, the exclusive rights of "printing, reprinting, publishing, and
vending" copies of their works.85 But in 1856, when Congress granted
statutory copyright protection to “dramatic compositions,” it also created
the performance right, granting owners of plays the exclusive right to "act,
79
SoundExchange, Frequently Asked Questions,
http://soundexchange.com/category/faq/#question-440; see also 17 U.S.C. § 114 (2009).
80
17 U.S.C. § 114(d)(3) (2009).
81
Id.
82
17 U.S.C. § 106(4) (2009); see also H.R. REP. NO. 94-1476 (1976).
83
Id. at § 106(6).
84
See generally Stadler, supra note 33, at 704.
85
See Copyright Act of 1790, ch. 15, § 1, 1 Stat. 124, 124; Act of Feb. 3, 1831, ch. 16, § 1,
4 Stat. 436, 436.
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perform, or represent the same, or cause it to be acted, performed, or
represented, on any stage or public place for the whole period for which the
copyright is obtained."86 However, Congress chose not to extend this right
to musical compositions, which continued to hold only "the sole right of
printing, copying, etc., and not of public representation."87 Congress
changed its position in 1897, when it finally granted the public performance
right to musical compositions.88 The 1909 Act limited copyright holders’
ability to demand licenses for performances of their works only to those that
were performed “publicly for profit.”89 The 1976 Act, however, dropped the
“for profit” requirement and opted to grant a broad public performance right
that would be limited by specific exclusions.90
b.History for Sound Recordings: § 106(6)
While the Supreme Court recognized sound recordings as distinct from
their underlying musical compositions vis-à-vis copyright protection as
early as 1908,91 sound recordings did not receive federal copyright
protection until over six decades later in the form of the Sound Recording
Amendment of 1971.92 Today, the Sound Recording Amendment lives on,
as the 1976 Copyright Act included sound recordings among the
enumerated copyrightable subject matters. However, while Congress
granted some copyright protection to sound recordings, it did not grant
these works a public performance right for almost two decades. In 1995,
recognizing that “digital transmission of sound recordings is likely to
become a very important outlet for the performance of recorded music in
the near future,”93 Congress finally granted sound recordings an exclusive
(albeit limited) public performance right by enacting the Digital
Performance Right in Sound Recordings Act (“DPRA”).94
86
Act of Aug. 18, 1856, ch. 169, 11 Stat. 138, 139.
Carte v. Duff, 25 F. 183, 187 (C.C.S.D.N.Y. 1885).
88
See Act of Jan. 6, 1897, ch. 4, 29 Stat. 481, 481–82 (extending protection to "dramatic or
musical composition[s]").
89
See Copyright Act of 1909, ch. 320, § 1(e), 35 Stat. 1075, 1075, repealed by Copyright
Act of 1976, Pub. L. No. 94-553, 90 Stat. 2541.
90
See H.R. REP. NO. 94-1476, at 14 (1976) (“The approach of the bill, as in many foreign
laws, is first to state the public performance right in broad terms, and then to provide
specific exemptions for educational and other nonprofit uses.”).
91
See White-Smith Music Publ'g Co. v. Apollo Co., 209 U.S. 1, 18 (1908) (holding that the
perforated rolls used to make the sounds of a musical work in a mechanical piano are
separate from the underlying musical work); see also Harkey, supra note 49, at 633.
92
Pub. L. No. 92-140, 85 Stat. 391 (1971).
93
H.R. REP. NO. 104-274, at 12 (1995).
94
Digital Performance Right in Sound Recordings Act of 1995, Pub. L. No. 104-39, 109
87
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173
The DPRA created a public performance right for sound recordings
that was limited by the contours of a three-tiered system. Broadly speaking,
this system created three classifications of digital audio transmissions and
then determined a given transmission’s treatment under the DPRA
accordingly. Under the DPRA, all “interactive” services were subject to
voluntary licenses. The treatment of “non-interactive” services depended on
whether the given service qualified as a “subscription” service. The DPRA
made “subscription” services subject to statutory licensing and essentially
provided a blanket exemption for non-subscription services. The contours
of this system were changed by the Digital Millennium Copyright Act in
1998.95 The DMCA amendment tightened the regulation of “digital audio
transmissions” by restricting the activities that qualify for the exemption
and broadening the activities that are subject to statutory licensing. Thus, as
the law currently stands, interactive services remain subject to voluntary
licenses.96 Non-interactive subscription services remain subject to statutory
licenses.97 But non-interactive, non-subscription services are no longer
protected by a blanket exemption.98 Thus, except for traditional radio
broadcasts, most non-interactive, non-subscription transmissions are subject
to statutory licenses.
c.The Rationale for Public Performance Rights Reflects the Utilitarian
View of Copyright
All this history begs the question: Why create a public performance
right in the first place? As it is in many a copyright question, the answer is
economic. The public performance right helps preserve the underlying,
utilitarian purpose of American copyright law by ensuring remuneration for
use of the underlying copy.
The relationship between songwriters and performers initially shaped
copyright holders’ notions of the public performance right. When
songwriters and composers first received the public performance right in
1897, most did not initially enforce this new right.99 Not only did the
songwriters view the performers as customers, they viewed the “public
performance of their songs as the best method of advertisement for sheet
music of their compositions, which, at the time, was their major source of
Stat. 336 (1995).
95
Digital Millennium Copyright Act, 1998, Pub. L. No. 105-304, § 405(a), 112 Stat. 2860
(1998).
96
17 U.S.C. § 114(d)(3) (2009).
97
Id. at § 114(d)(2).
98
Id. at § 114(d)(1).
99
See Conley, supra note 69, at 415.
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income.”100 Sara Stadler describes the situation in her article Performance
Values: “Playwrights sold copies of their plays to producers and directors
who wished to stage performances. Songwriters sold copies of their songs
(known as “sheet music”), not only to orchestras and singers, but also to
millions of ordinary Americans.”101 As she explains, “[i]n this world, in
which recording devices did not exist, there were only two ways to perform
a copyrighted play or song without having a copy in hand: (1) to perform
the work from memory; and (2) to record a performance by hand, that is, by
taking notes.”102 As long as others were purchasing copies of their work,
copyright holders were perfectly content. Thus the performance right was
used, if at all, to provide copyright holders with a way to enforce their right
to remuneration for the underlying copy, not to protect the performance
itself. In other words, “notwithstanding the existence of the right, the
possession of a copy was, and continues to be, critical to the enterprise of
performance.”103
Technology, however, would change the prevailing views on the
purpose and scope of the public performance right. In 1897, player pianos
hit the market. These devices were capable of performing the underlying
musical composition by reading perforated rolls of paper. This technology
thus presented two innovations: the ability to “record” the underlying sheet
music and then to perform that work to a large number of the public. This
would have posed no problem if the manufacturers reproducing the music
onto piano rolls had purchased the right to do so. Since this was not a legal
requirement at the time, though, they of course did not.104 In fact, the
Supreme Court reinforced this fact in White-Case Music Publishing Co. v.
Apollo Co., when it held that the piano rolls were not “copies” under the
pre-1909 Act.105 While the 1909 Act would change this result,106 the public
100
Id.
See Stadler, supra note 33, at 706.
102
Id.
103
Id. at 707.
104
CRAIG H. ROELL, THE PIANO IN AMERICA, 1890-1940 59 (1989) ("These manufacturers
were not required by law to pay royalties to composers upon the sale of a recording.”).
105
209 U.S. 1, 18 (1908). As to the performance right, the Court noted, "There is no
complaint in this case of the public performance of copyrighted music; nor is the question
involved whether the manufacturers of such perforated music rolls when sold for use in
public performance might be held as contributing infringers." Id. at 16.
106
See Stadler, supra note 33, at 709–10. (noting “[i]n section 1(d) of the Copyright Act of
1909, Congress gave owners of copyright in dramatic works the exclusive right not only to
‘perform or represent the copyrighted work publicly,’ but also to ‘vend any manuscript or
any record whatsoever thereof’ and to make any such record ‘from which . . . it may in any
manner or by any method be exhibited, performed, represented, produced, or
reproduced’”).
101
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175
performance right was no longer the same for songwriters. No longer were
the performers customers. No longer were they costless advertisers. Unless
they had purchased authorized copies, they were infringers. These public
performances were piracy.
Technology also shaped the notion of the public performance right in
sound recordings. The pattern is familiar: emerging technology—digital
copies and the compact discs that embodied them, as well as technologies
capable of delivering digital transmissions—heightened the potential for
widespread piracy, threatening copyright holders’ ability to capitalize on
their works economically. This technology especially threatened the owners
of copyrights in sound recordings—record labels—because the benefit of
free promotion via radio broadcast that traditionally compensated for the
lack of a public performance right depended upon scarcity. That is, this
relationship was beneficial to the recording industry only as long as radio
broadcasting boosted record sales, which was only viable as long as
consumers were limited to purchasing tangible copies of pre-recorded
music. Of course, once digital technology emerged, which rivaled analog by
providing unprecedented sound quality, the record industry knew that
consumers would not be so limited.107 Thus, the central concern of the
recording industry was that, absent a public performance right for sound
recordings, digital transmission technology would displace the longstanding linchpin in the industry’s business model: recorded music sales in
“brick and mortar” retail stores.
The 1998 DMCA amendments similarly arose in response to new
technology. Shortly after the DPRA was enacted, the first technology for
streaming audio—RealAudio—was developed and released by Progressive
Networks.108 Thus webcasting was born, meaning it was now possible to
make digital audio transmissions over the internet. Not only did webcasting
allow broadcasters to digitally transmit sound recordings via the internet, it
also allowed users to freely copy and share transmitted sound recordings,
“or to listen to [such] services in lieu of purchasing music.”109 Once again, a
new technology struck fear into the heart of the record industry by
challenging the fundamental underpinnings of the industry’s business
model. In other words, the record industry was losing money— a lot of
money. According to the RIAA, by 1997, the record industry was losing $1
107
H.R. REP. NO. 104-274, at 12 (1995) (“Consumers have embraced digital recordings
because of their superior sound quality.”).
108
See Kenneth D. Susan, Comment, Tapping to the Beat of a Digital Drummer: Fine
Tuning U.S. Copyright Law for Music Distribution on the Internet, 59 ALB. L. REV. 789,
799 (1995).
109
Arista Records, LLC v. Launch Media, Inc., 578 F.3d 148, 155 (2d Cir. 2009).
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million a day due to music piracy.110
Thus, two things stand out with regard to the purpose of the public
performance right. First, the public performance right is not intended to
protect the actual performance of a work, but instead to protect the
copyright holder’s ability to reap a monetary benefit from his work. Second,
when technology emerges that allows for the performance itself to supplant
demand for the copy, the performance right allows the copyright holder to
compensate for the relative loss in value of his copy. In this sense, the right
reflects the fundamental, utilitarian premise upon which American
copyright law is based: Congress incentivizes innovation and creativity by
granting limited monopolies to authors and, as a result, maximizes social
and economic welfare.
III. PURE DOWNLOADS DO NOT, AND SHOULD NOT,
CONSTITUTE PUBLIC PERFORMANCES UNDER THE
COPYRIGHT ACT
While the PROs claim that “pure” downloads of songs—i.e.,
transmissions solely of data containing the work in digital format—
constitute “public performances” of the copyrighted works, this section will
disprove that argument. Through an in-depth statutory analysis, it will show
that Congress intended the definition of “perform” to require
contemporaneous sensory perception by the downloader/user in order for
such activity to constitute a “performance.” And by applying common
canons of statutory interpretation, it reveals that pure downloads, per se, do
not constitute public performances. Further, it will argue that, as a matter of
policy, pure downloads should not constitute public performances because
such a classification would run counter to the economic foundation of the
Copyright Act.
A. As a Matter of Law, Pure Downloads Do Not Constitute Public
Performances
1. Statutory Language
Section 106(4) grants copyright owners of musical compositions the
exclusive right “to perform the copyrighted work publicly.”111 Section
106(6) grants copyright owners of sound recordings the right to “perform
110
Id. (citing Copyright Piracy in the Internet: Hearing on H.R. 2265 Before H. Comm on
the Judiciary, Subcomm. on Courts & Intellectual Prop., 105th Cong. (1997) (statement of
Cary Sherman, Senior Executive Vice President and General Council of the RIAA)).
111
17 U.S.C. § 106(4) (2009).
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the copyrighted work publicly by means of a digital audio transmission.”112
This section will analyze whether “pure” downloads implicate these
exclusive public performance rights. To do so, we must begin with the
statute itself. To violate the copyright holder’s public performance right, a
given activity must first meet two criteria: first, it must be a performance;
second, this performance must be made publicly.
As applied to songs, “[t]o ‘perform’ a work means to recite, render,
play, dance, or act it, either directly or by means of any device or process . .
. .” The terms “recite,” “render,” and “play” are left undefined by the Act.
Further, “[t]o perform or display a work ‘publicly’” means either:
(1)to perform or display it at a place open to the public or at any place
where a substantial number of persons outside of a normal circle of a family
and its social acquaintances is gathered; or
(2)to transmit or otherwise communicate a performance or display of
the work to a place specified by clause (1) or to the public, by means of any
device or process, whether the members of the public capable of receiving
the performance or display receive it in the
same place or in separate places
and at the same time or at different times.113
I will refer to these clauses as the “public place clause” and the
“transmit clause,” respectively. For pure downloads, which occur between
individual computer hard drives, the “transmit” clause is obviously the only
potential candidate. Accordingly, this section will only analyze the issue
under that clause. Under the Act, “[t]o ‘transmit’ a performance or display
is to communicate it by any device or process whereby images or sounds
are received beyond the place from which they are sent.”
2. Retailers Can Rely on Precedent: In re RealNetworks I & II
When it comes to determining whether pure downloads constitute
public performances under the Copyright Act, iTunes and other online
retailers have the clear advantage of judicial precedent. To date, the only
district court to squarely address the issue concluded downloads are not
performances. In RealNetworks I,114 the District Court for the Southern
District of New York held that “in order for a song to be performed, it must
be transmitted in a manner designed for contemporaneous perception.” And
even though it acknowledged that the term “perform” was to be construed
112
Id. at § 106(6).
Id. at § 101.
114
U.S. v. Am. Soc’y of Composers, Authors & Publishers In re RealNetworks, 485 F.
Supp. 2d 438, 443–44 (S.D.N.Y. 2007), affirmed in part, vacated in part on other grounds,
2010 U.S. App. LEXIS 19983, at *5 (2d Cir. Sep. 28, 2010) [hereinafter RealNetworks II].
113
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broadly, it concluded that “we can conceive of no construction that extends
it to the copying of a digital file from one computer to another in the
absence of any perceptible rendition. Rather, the downloading of a music
file is more accurately characterized as a method of reproducing that
file.”115
At the heart of the decision was the court’s finding that a download is
simply not a “performance” under the Act. Since the Act does not define the
terms “recite,” “render,” or “play,” the court applied the axiom that “[w]hen
words in a statute are not otherwise defined, it is fundamental that they will
be interpreted as taking their ordinary, contemporary, common meaning.”116
Accordingly, the court looked to the dictionary.117 From these definitions,
the court concluded that “[a]ll three terms require contemporaneous
perceptibility.”118 In addition to citing other courts for the proposition that
pure downloads do not constitute public performances,119 the court relied on
two “responsible authorities” that had similarly classified these
transmissions as implicating only the reproduction right. In its 2001 report
to Congress on developing technology’s effect on copyright law, the United
States Copyright Office stated:
[W]e do not endorse the proposition that a digital download constitutes
a public performance even when no contemporaneous performance takes
place ... It is our view that no liability should result from a technical
"performance" that takes place in the course of a download…[T]o the extent
that such a download can be considered a public performance, the
performance is merely a technical by-product of the transmission process
that has no value separate from the value of the download. . . . [I]t is our
view that no liability should result under U.S. law from
a technical
"performance" that takes place in the course of a download.120
115
Id. at 444.
Morse v. Rep. Party of Va., 517 U.S. 186, 254 (1996) (internal citations omitted).
117
RealNetworks I, 485 F. Supp. 2d, at 443 (internal citations omitted) (“MerriamWebster's Dictionary defines ‘recite’ as ‘to repeat from memory or read aloud publicly.’
Similarly, in the present context, the term ‘render’ is defined as ‘to reproduce or represent
by artistic or verbal means[,] depict . . . to give a performance of . . . to produce a copy or
version of (the documents are rendered in the original French) . . . to execute the motions of
(render a salute)’ and ‘play’ is defined as ‘to perform music (play on a violin) . . . to sound
in performance (the organ is playing). . . to emit sounds (the radio is playing) . . . to
reproduce recorded sounds (a record is playing) . . . to act in a dramatic production.’”).
118
Id.
119
See id. at 444 (citing, among others, A&M Records, Inc. v. Napster, Inc., 239 F.3d
1004, 1014 (9th Cir. 2001)).
120
RealNetworks I, 485 F. Supp. 2d 438, 444–45 (S.D.N.Y. 2007) (citing U.S. Copyright
Office, Digital Millennium Copyright Act Section 104 Report to the United States
Congress [hereinafter 2001 Copyright Office Report] (Marybeth Peters, Register of
Copyrights),
at
xxvii–xxviii
(Aug.
29,
2001),
available
at
116
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179
Similarly, in a 1995 report, the United States Department of
Commerce's Information Infrastructure Task Force stated:
A distinction must be made between transmissions of copies of works
and transmissions of performances or displays of works. When a copy of a
work is transmitted over wires, fiber optics, satellite signals or other modes
in digital form so that it may be captured in a user's computer without the
capability of simultaneous
"rendering" or "showing," it has rather clearly
not been performed.121
The United States Court of Appeals for the Second Circuit affirmed the
district court’s conclusion, holding that a download of a musical work does
not constitute a public performance of that work.122 In RealNetworks II, the
Second Circuit applied an analysis similar to that of the district court and,
after noting that the “first step is to determine whether the language at issue
has a plain and unambiguous meaning with regard to the particular dispute
in the case,”123 concluded that “the ordinary sense of the words ‘recite,’
‘render,’ and ‘play’ refer to actions that can be perceived
contemporaneously.”124 While it acknowledged that one definition of “to
render,” —namely, “to hand over to another (as the intended recipient):
deliver transmit,”125 would support ASCAP’s position—the court applied
noscitur a sociis and found that particular definition inapplicable in the
context of the Act’s definition of “to perform.”126
To summarize, under RealNetworks I and RealNetworks II, in order for
a song to be performed, it must “be transmitted in a manner designed for
contemporaneous perception.” Under this test, a pure download—which
constitutes nothing more than data files being transferred from a server to a
specific user’s hard drive—does not implicate the public performance right.
Instead, the reproduction right is implicated, as “the delivery of a music file
to a purchaser via a download constitutes a mechanical reproduction of the
copyrighted work in the form of a ‘digital phonorecord delivery.’”127 Thus,
the case clearly favors iTunes. It remains to be seen whether such reasoning
http://www.copyright.gov/reports/studies/dmca/sec-104-report-vol-1.pdf).
121
Id. at 445 (citing Information Infrastructure Task Force, The Report of the Working
Group on Intellectual Property Rights (Bruce A. Lehman), at 71 (Sept. 1995) (footnote
omitted)).
122
RealNetworks II, 2010 U.S. App. LEXIS 19983, at *14 (2d Cir. 2010).
123
Id. at *15–16 (quoting Barnhart v. Sigmon Coal Co., 534 U.S. 438, 450 (2002)).
124
Id. at *16.
125
See id. (citing Webster’s Third New International Dictionary 1895 (1981)).
126
RealNetworks II, 2010 U.S. App. LEXIS 19983, at *17–18.
127
RealNetworks I, 485 F. Supp. 2d 438, 447 (S.D.N.Y. 2007).
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will be adopted in other circuits, but given the Second Circuit’s influence on
copyright law, the case cannot be taken lightly.
3. Proper Statutory Interpretation Affirms the “Contemporaneous
Perception” Requirement
The PROs’ central argument relies on the “transmit clause” in order to
get around any “contemporaneous perception” requirement. According to
these groups, “every transmission of a performance to members of the
public constitutes a public performance, regardless of whether the
performance can be heard during its transmission, and regardless of what
happens to the transmission at the receiving end.”128 However, this
argument breaks down upon closer analysis, as proper statutory
interpretation affirms the “contemporaneous perception” requirement.
Legislative history clearly establishes a congressional intent to define
“transmit” broadly.129 From this, the PROs claim that the transmission of
music files necessarily constitutes a public performance under the
“transmit” clause. However, as the RealNetworks I court pointed out, “the
transmission of a performance, rather than just the transmission of data
constituting a media file, is required in order to implicate the public
performance right in a copyrighted work.”130 In its brief, ASCAP claimed
that a public performance is “simply an initial performance—a ‘rendering’
or ‘playing’ of a work—followed by transmission of that initial
performance to members of the public.”131 And, this so-called “initial
performance,” it continued, “occurs when the performing artists and
musicians play the song in the recording studio—‘play’ being among the
non-exhaustive examples of ‘perform’ specifically enumerated in the
statute—and that performance is recorded.”132 To be fair, there is some
legislative history that, if glossed over quickly, can be read to support such
128
ASCAP’s Memorandum of Law in Support of Its Motion for Partial Summary
Judgment [hereinafter ASCAP’s Memo] at 2, RealNetworks I, 485 F. Supp. 2d 438
(S.D.N.Y. 2007) (2007 WL 7007120).
129
H.R. REP. NO. 94-1476, at 15 (1976) (“The definition of ‘publicly’ in section 101 makes
clear that the concepts of public performance and public display include not only
performances and displays that occur initially in a public place, but also acts that transmit
or otherwise communicate a performance or display of the work to the public by means of
any device or process . . . Each and every method by which the images or sounds
comprising a performance or display are picked up and conveyed is a ‘transmission,’ and if
the transmission reaches the public in my form, the case comes within the scope of clauses
(4) or (5) of section 106.”).
130
RealNetworks I, 485 F. Supp. 2d at 446.
131
See ASCAP’s Memo, supra note 128, at 2.
132
Id.at 3.
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181
an argument. The 1976 House Report states:
[T]he concepts of public performance and public display cover not only
the initial rendition or showing, but also any further act by which that
rendition or showing is transmitted or communicated to the public. Thus,
for example: a singer is performing when he or she sings a song; a
broadcasting network is performing when it transmits
his or her
performance (whether simultaneously or from records).133
While, at first blush, this language appears to bolster the PROs’ claim,
a closer reading illuminates the shortcomings of the argument. Both the
statute and the above-quoted legislative history explicitly require that, in
order for a transmission to implicate the public performance right, it must
“transmit or otherwise communicate a performance.”134 Simply transmitting
or communicating the work in digital format does not implicate the public
performance right unless a “performance” of the work itself is transmitted.
The Second Circuit agreed in RealNetworks II,135 and its analysis of
this issue compellingly reinforces this conclusion. On appeal, ASCAP once
again argued that downloads implicate the transmit clause “because they
‘transmit or otherwise communicate a performance,’ namely the initial or
underlying performance of the copyrighted work, to the public.”136 The
court noted, however, that “when Congress speaks of transmitting a
performance to the public, it refers to the performance created by the act of
transmission, not simply to transmitting a recording of a performance.”137 It
then proceeded to dismantle ASCAP’s argument, describing the logic as
“flawed because, in disaggregating the ‘transmission’ from the
simultaneous ‘performance’ and treating the transmission itself as a
performance, ASCAP renders superfluous the subsequent ‘a performance
… of the work’ as the object of the transmittal.”138 Thus, the issue turns on
what constitutes a “performance” under the Act. The RealNetworks courts
concluded that a “performance” requires “contemporaneous perception”,
and proper statutory interpretation affirms this result.
Other commentators have likewise concluded that the Act requires
real-time sensory perception.139 While the court relied on the MerriamWebster Dictionary to define “render,” one author employed the Oxford
133
See H.R. REP. NO. 94-1476, at 63 (1976).
17 U.S.C. § 101 (2009) (emphasis added).
135
RealNetworks II, 2010 U.S. App. LEXIS 19983, at *20–21.
136
Id. at *20.
137
Id. (quoting Cartoon Network LP v. CSC Holdings, Inc., 533 F.3d 121, 136 (2d Cir.
2008)).
138
Id. at *21.
139
See Knobler, supra note 42, at 549–553.
134
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English Dictionary (“OED”), which, in part, defines “render” as:
4. To reproduce or represent, esp. by artistic means, to depict.
4b. To play or perform (music).
7. To hand over, deliver, commend, or commit, to another; to give, in
various senses, to grant, concede.140
According to the canon of statutory construction known as noscitur a
sociis, “the meaning of an unclear word or phrase should be determined by
the words immediately surrounding it.”141 The words immediately
surrounding “render” are “recite, play, dance, [and] act,” each of which
involves contemporaneous sensory perception by the audience.
Accordingly, we can conclude that Congress intended the word “render,” as
used in the definition of “perform,” to similarly require simultaneous
sensory perception. As noted above, the RealNetworks II court explicitly
applied this logic in concluding that the each word in the list of terms used
to define “to perform” in the Act requires contemporaneous
perceptibility.142
This conclusion is further supported by the definition of “perform” as
it relates to movies. The Act additionally defines “perform” to mean, “in the
case of a motion picture or other audiovisual work, to show its images in
any sequence or to make the sounds accompanying it audible.” Because the
work must be shown or made audible, this definition of “perform” clearly
requires simultaneous sensory perception. Thus, ASCAP’s argument leads
to an absurd conclusion: downloading a motion picture would require
contemporaneous sensory perception to constitute a “performance,” but
downloading a song would not. It is axiomatic that “[i]f a literal
construction of the words of a statute be absurd, the act must be so
construed as to avoid the absurdity.”143 The Second Circuit applied this
reasoning in RealNetworks II, noting that “[t]he fact that the statute defines
performance in the audio-visual context as ‘show[ing]’ the work or making
it ‘audible’ reinforces the conclusion that ‘to perform’ a musical work
entails contemporaneous perceptibility.”144 Accordingly, because pure
downloads lack any contemporaneous perception of the song by the user,
they cannot qualify as performances of these works. Pure downloads simply
do not implicate the public performance right. However, as I will argue in
140
Id. at 550.
BLACK’S LAW DICTIONARY (8th Ed. 2004).
142
RealNetworks II, 2010 U.S. App. LEXIS 19983, at *16.
143
Church of the Holy Trinity v. U.S., 143 U.S. 457, 460 (1892).
144
RealNetworks II, 2010 U.S. App. LEXIS 19883, at *19.
141
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183
Part V, Congress should amend the definition of “perform” to clearly
require contemporaneous perception.
B. As a Matter of Policy, Downloads Should Not Constitute Public
Performances
Regardless of statutory interpretation, pure downloads should not
implicate the public performance right as a matter of policy. Music
publishers and PROs portray the issue as iTunes’ not paying its fair share to
struggling artists. However, analysis reveals that this demand for “just
compensation” is really an attempt to extract duplicative royalties for the
same transmission by claiming the right to be compensated for an additional
technical component of the transmission that has no economic value.
1.Performance Licenses for Downloads Enables “Double Dipping”
As noted, for each download, the publishers—usually through HFA—
receive a “mechanical license” for the digital reproduction of a copy of the
underlying work. But these publishers—and the PROs—are now
demanding an additional license for the public performance that allegedly
occurs with each download. As many commentators have argued, such a
duplicative licensing regime amounts to “double dipping,” or, in other
words, charging for the same thing twice. The PROs claim that reproduction
rights and performance rights are explicitly distinct rights that require
explicitly distinct payments.145 This statement is technically correct—until
it is applied to pure downloads, the alleged “performance” is but a mere
byproduct of the transmission whose existence is wholly incidental to the
technology involved. Viewed in this light, the proposed licensing fee looks
more like an attempt to exploit a technicality than a legitimate scheme of
remuneration. Enacting such a regime would allow these groups to demand
payment for transfers without any intrinsic value and, therefore, go above
and beyond the economic system envisioned by the Constitution.
To be fair, there is one reason for channeling funds through PROs:
ASCAP and BMI distribute directly to authors.146 HFA does not. It pays
publishers. Thus, one could argue that the additional royalties generated
would really be going to the songwriters. But this argument is unconvincing
for a number of reasons. First, as noted above,147 it is based on the
erroneous assumption that iTunes would not restructure its cash flows in
145
See Sandoval, supra note 8 (noting that, in countering the “double dipping” argument,
the president of NMPA argues “we’re going to lose the income of the performance”).
146
See supra note 70.
147
See supra Part I.
184
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response to these additional costs. That is, financial outflows based on the
mechanical rights would likely be tweaked downward. If this were not
possible, then the fees would come at the expense of the sound recording
copyright holders or consumers. Neither option seems palatable. Further, if
the industry was truly concerned about realigning the current royalty
distribution scheme, it could do so. iTunes should not be subject to
additional fees simply because one collective rights society distributes
royalties in a manner that seems more equitable than the next. Most
importantly, though, this argument must fail because it would produce a
result that runs counter to the underlying purposes of American copyright
law. That is, it uses emotional appeal to mask the fact that it would result in
charging consumers for an alleged performance that, if it occurs at all, has
no economic value.
2.Any Performance That Occurs Has No Economic Value
In a broader sense, the issue of whether a download constitutes a public
performance arises only because the technology involved, when combined
with the literal statutory language, creates some blurry areas of potentially
overlapping rights. However, copyright law should only compensate the
artist—i.e., require the public to pay—where doing so is economically
justifiable. This is not one of those cases.
In its 2001 report to Congress, the Copyright Office made two findings
especially relevant here. First, it noted that, “to the extent that such a
download can be considered a public performance, the performance is
merely a technical by-product of the transmission process that has no value
separate from the value of the download.”148 Thus, but for the technology
employed, there would be no allegation of a public performance. The
Copyright Office’s second finding is even more telling:
The buffer copies have no independent economic significance. They
are made solely to enable the performance. The same copyright owners
appear to be seeking a second compensation for the same activity merely
because of the happenstance that the transmission technology implicates the
reproduction right, and the reproduction right of songwriters and music
publishers is administered
by a different collective than the public
performance right.149
Though it arose in the mirror-image context—there it was HFA arguing
that streaming transmissions required a mechanical license—this line of
148
149
See 2001 Copyright Office Report, supra note 120, at 142.
Id. at 143.
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reasoning applies to this situation because it touches upon the same core
issue. In both cases, the copyright owners were seeking to extract a
duplicative payment for a single transmission by claiming the right to be
compensated for an ancillary, technological byproduct that potentially
implicated another right yet had no independent economic value. As other
commentators have argued, “such claims often tie the payment of royalties
to the technological means by which value is delivered to the consumer,
rather than to the value itself.”150 To require additional fees in such a
situation would undermine the economic, utilitarian framework that
underlies copyright law.
IV. THIRTY-SECOND PREVIEWS LIKELY CONSTITUTE
PUBLIC PERFORMANCES BUT SHOULD BE EXEMPT FROM
LICENSING
While pure downloads are not public performances under the
Copyright Act, streaming transmissions clearly are. In fact, such
transmissions implicate the public performance right in both the musical
composition and the sound recording. As a result, the thirty-second samples
of songs found on iTunes are likely public performances. And with regards
to the sound recording copyright, these transmissions will qualify as
“interactive,” thus requiring Apple and other online retailers to negotiate
with each individual copyright holder. However, as I will argue in Part V,
this inefficient and shortsighted result can be avoided if such transmissions
receive protection from a statutory amendment.
A.As Streaming Transmissions, iTunes’ Song Previews Likely Implicate
the Public Performance Right for Musical Compositions and Sound
Recordings
There is little debate that streaming, which by definition allows a song
to be “played” contemporaneously with the transmission, constitutes a
performance under the Act.151 And because this performance is made
available to “the public” over the internet,152 it clearly implicates the public
150
See Cardi, supra note 41, at 865.
Id. at 860 (noting that streaming technology “facilitates the performance of a song via
transmission from the originating service, over the internet, into a user’s computer RAM,
and through the user’s computer speakers”).
152
Courts have long held that broadcasts to geographically-dispersed listeners are still
public performances, even if each member of “the public” actually receives the
transmission in his home. See, e.g., Jerome H. Remick & Co. v. Am. Auto. Accessories
Co., 5 F.2d 411, 412 (6th Cir. 1925) (“A performance, in our judgment, is no less public
because the listeners are unable to communicate with one another, or are not assembled
151
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performance right in the musical composition. Further, streaming
transmissions over the internet implicate the public performance right in
sound recordings. This means that a typical streaming service must obtain a
performance license for the musical composition from the relevant PRO and
a performance license for the sound recording. iTunes’ thirty-second song
previews are typical streaming transmissions. As a result, without a viable
defense, these song samples provided for free on iTunes likely constitute
public performances of both the musical composition and the sound
recording.
B.Equitable Considerations and Proper Legal Analysis Demand that
iTunes Should Be Given the Same Exemption Currently Available to Brickand-Mortar Music Stores
1.Equitable Considerations Favor an Exemption
The PROs’ demands are unwarranted from an equitable standpoint.
The sole purpose for providing these previews on iTunes is to encourage
legally-purchased downloading, an activity that is licensed by the copyright
owner and for which the copyright owner receives a royalty. iTunes
provides this promotional device free-of-charge. To demand payment does
not seem to benefit the copyright holders, much less provide an equitable
basis for relief. Jonathan Potter, executive director of the Digital Media
Association (“DiMA”), a trade group that represents internet music services
and media companies, summarizes the issue: "They are picking on Apple
because they say Apple is making a bundle of money. But these companies
should be thrilled that Apple and the other services are selling music and
generating millions, maybe tens of millions, in royalties."153
However, in a recent case—hereinafter referred to as the Ringtone
Case154—the court denied a wireless company’s motion for summary
judgment and held that the thirty-second previews of songs provided on the
company’s website did not constitute “fair use,” a defense to infringement
that has grown from an equitable doctrine to a codified, “noninfringing
use.”155 The case arose out of a dispute between ASCAP and AT&T over
whether AT&T should be required to make royalty payments for the
within an enclosure, or gathered together in some open stadium or park or other public
place. Nor can a performance, in our judgment, be deemed private because each listener
may enjoy it alone in the privacy of his home.”).
153
See Sandoval, supra note 8.
154
U.S. v. ASCAP, 599 F. Supp. 2d 415 (S.D.N.Y. 2009) [hereinafter Ringtone Case].
155
See 17 U.S.C. § 107 (2009).
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previews.156 AT&T makes ringtones157 and ringback tones158 available for
purchase and offers previews of each to its customers prior to purchase.159
The ringtones and ringback tones can be purchased in one of two ways:
either through its "MEdia Mall" website or through its MEdia Mall mobile
application.160 Before purchasing a particular ringtone, a customer may
listen to a preview, which plays for ten to thirty seconds.161 And the only
way for a user to listen to a preview is to click on an icon symbolized by a
speaker illustration that appears next to each song listed in the search results
next to the word "BUY."162
While the facts of the Ringtone Case are distinguishable in many
respects from those at play in the iTunes debate,163 courts may be
influenced by that court’s decision and refuse to recognize iTunes’ thirtysecond samples as fair uses. However, regardless of fair use, one equitable
consideration clearly cuts in favor of exempting iTunes from any additional
licensing fees—namely, the treatment currently afforded traditional, brickand-mortar music stores under Section 110 of the Act.
2.Section 110 Should Apply to iTunes
Copyright law protects traditional music stores—iTunes’ brick-andmortar analogs—from being charged performance fees for in-store sampling
if certain requirements are met. The same should apply in the digital
context. Section 110 of the Act, entitled “Exemptions of certain
performances and displays,” states that a “vending establishment” is exempt
from liability
where the sole purpose of the performance is to promote the retail sale
156
See Ringtone Case, 599 F. Supp. 2d at 419–21.
A ringtone is a tune that plays when an individual who has purchased a ringtone
receives a telephone call.
158
Ringback tones substitute a tune for the sound a caller normally hears while waiting for
the person called to answer the phone.
159
Ringtone Case, 599 F. Supp. 2d at 419.
160
Id. at 420.
161
Id.
162
Id.
163
For example, the court found the third factor to weigh heavily in favor of ASCAP
“[b]ecause the expressive value of the music was copied and because that expressive value
constitutes the previews in their entirety.” 599 F. Supp. 2d at 431 (emphasis added). In fact,
the “previews may be ‘rather close approximations of the ringtones and [ringback tones]
for purchase, and sometimes actually longer in length than the product they are
promoting.” Id. at 421. While both the iTunes and AT&T previews use verbatim copies of
copyrighted works, iTunes uses thirty-second clips from songs of much longer, though
varying, duration.
157
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of copies or phonorecords of the work, or of the audiovisual or other
devices utilized in such performance, and the performance is not transmitted
beyond the place where the establishment
is located and is within the
immediate area where the sale is occurring.164
And in these cases, “[a copyright holder] has no right to demand
royalty payments for the use of music that is exempt from copyright
liability.”165 In fact, ASCAP has acknowledged the fairness of this result:
When a performance is given at a record store, it cannot be used by the
store or the customer for any other purpose. The customer cannot ‘take’ the
performance away from the store, nor can the store profit from 166
the
performance in any way other than to demonstrate the sale of the record.
Just like the song previews in physical stores, the previews available on
iTunes are provided for the sole purpose of promoting the sale of the record
being transmitted. While iTunes does not qualify for the statutory
exemption, which by its terms is limited to in-store samples at physical
locations, the purpose of the exemption supports a finding that iTunes’ use
of the copyrighted works is fair. However, there is an argument for
excluding digital retailers from this exemption that should be considered,
namely: previews at brick-and-mortar stores are different from previews
over the internet with regards to satisfying the requirement that the preview
“not [be] transmitted beyond the place where the establishment is located
and [be] within the immediate area where the sale is occurring.”167 To use
ASCAP’s words:
When a performance is given at a record store, it cannot be used by the
store or the customer for any other purpose. The customer cannot “take”
the performance away from the store, nor can the store profit from the
performance in any way other than to demonstrate the sale of the record.
But just the opposite is true for a transmission of music on the internet.
Either by way of downloading or streaming the music, the “customer” can
listen to the music at home, as a substitute for other means of performance,
such as a broadcast radio station, an on-line audio Webcaster, or any other
transmission entity which must pay performing rights fees to the creators
164
17 U.S.C. § 110(7) (2009).
U.S. v. Am. Soc'y of Composers, Authors & Publishers, 157 F.R.D. 173, 207 (S.D.N.Y.
1994).
166
See Reply Comments of ASCAP, at 6, In the Matter of Report to Congress Pursuant to
Section 104 of the DMCA, (Sept. 5, 2000) (No. 000522150-0150-01), available at http://
www.copyright.gov/reports/studies/dmca/reply/Reply011.pdf.
167
See id. at 6–7.
165
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and copyright owners of the music performed.168
ASCAP—and the court itself—relied heavily on this logic in the
Ringtone Case.169 To be sure, this requirement makes sense in certain
circumstances, for if retailers could use free music as a “draw” to bring
consumers into their stores to purchase other items, the retailers would
benefit at the expense of copyright holders. But the argument falls short for
a couple reasons in the iTunes context. First, this argument conflates the
free transmission of the entire item to which a consumer attributes value—
i.e., the full song, or, in the Ringtone Case, the full derivative work the
consumer would otherwise have to purchase—with the use of a portion of
that item as a means of encouraging sales in the full version of the
copyrighted work. Further, the argument relies on the assumption that the
“store” requirement is applicable to the internet context. But even if one
accepts the claim that such a metaphysical “store” exists, it must be the
“iTunes Store,” which serves as the digital retailer’s online sales
platform.170 Since users can only listen to the previews while “inside” the
iTunes Store, the threats envisioned by Congress simply cannot materialize.
C.The Current Act Would Apply the Counter-Productive “Interactive
Service” Provider Label to iTunes and Produce Inefficient Results
Since fair use can only be established after the fact on a case-by-case
basis—not to mention the Ringtone Case’s likely influence on any such
cases—the effects of the PROs’ demands on iTunes should be analyzed
under current law as if fair use does not apply. Because iTunes’ thirtysecond song samples stream songs to users’ computers over the internet,
these transmissions implicate not only the general public performance right
afforded musical compositions under section 106(4), but also the limited
public performance right in sound recordings under section 106(6). Section
106(6) gives the sound recording copyright owner the exclusive right to
perform the work publicly “by means of a digital audio transmission.” As
we saw above, these transmissions technically qualify as public
performances. They also qualify as “digital audio transmissions” because
they “embod[y] the transmission of a sound recording.”171 Therefore, their
168
Id.
See Ringtone Case, 599 F. Supp. 2d 415, 433–34 (S.D.N.Y. 2009).
170
See Apple, iTunes: What is iTunes?, http://www.apple.com/itunes/what-is/store.html
(last visited Apr. 19, 2010).
171
“A ‘digital audio transmission’ is a ‘digital transmission’ as defined in section 101 that
embodies the transmission of a sound recording. This term does not include the
transmission of any audiovisual work.” 17 U.S.C. § 114(j)(5) (2009). A “digital
169
190
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treatment under the Act depends upon their classification within the threetiered system created by the DPRA. And because iTunes falls under the
“interactive service” classification, these transmissions are subject to
voluntary licensing—meaning Apple must negotiate independently with
each individual copyright holder (both musical composition and sound
recording) in order to play the song over the internet.172
1.The Requirements of an “Interactive Service” Provider
The sound recording copyright owner “has a right to demand that those
who perform— i.e., play or broadcast—its copyrighted sound recording pay
an individual licensing fee to [the copyright holder] if the performance of
the sound recording occurs through an “interactive service.”173 An
“interactive service,” according to the statute, “is one that enables a member
of the public to receive a transmission of a program specially created for the
recipient, or on request, a transmission of a particular sound recording,
whether or not as part of a program, which is selected by or on behalf of the
recipient.”174
Because iTunes users can, “on request,” enable the transmission of a
particular sound recording (albeit thirty seconds of that sound recording) to
be played over their computers, iTunes squarely qualifies as a provider of
an “interactive service.” This explains why music publishers and PROs like
ASCAP are demanding payment while the PRO for sound recordings,
SoundExchange, has remained silent: the law mandates that providers of
“interactive services” deal directly with each sound recording copyright
holder, or, in copyright jargon, enter into a “voluntary license.” Further, if
iTunes were required to negotiate voluntary licenses with each sound
recording copyright holder, it would also be required to obtain a license for
the underlying musical composition.175 All this for streaming thirty-second
transmission” is simply “a transmission in whole or in part in a digital or other non-analog
format.” § 101. Recall that “to ‘transmit’ a performance or display is to communicate it by
any device or process whereby images or sounds are received beyond the place from which
they are sent.” Additionally, legislative history makes clear that “transmit” is to be
interpreted very broadly. See S. REP. NO. 94-473, at 61 (1975) (“The definition of
‘transmit’ . . . is broad enough to include all conceivable forms and combinations of wired
or wireless communication media . . . .”).
172
See 17 U.S.C. § 114(d)(3) (2009); Bonneville v. Peters, 347 F.3d 485, 489 n.7 (3d Cir.
2003) (“Interactive, on-demand services are subject to an almost unconditional
performance right in the copyright holder: the purveyors of such services are required to
negotiate individual, discretionary licenses with individual copyright holders subject to
certain time limitations for exclusive licenses.”).
173
Arista Records, 578 F.3d at 148.
174
17 U.S.C. § 114(j)(7) (2009).
175
See id. at § 114(d)(3)(C) (“Notwithstanding the grant of an exclusive or nonexclusive
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191
previews of songs that boost record sales. Not only is this result wildly
inefficient, it threatens to hamper the industry’s growth in the digital arena.
This result highlights a legal distinction that—given the technological
advances and market innovations since its enactment—now seems largely
outdated and out of touch with the future of the music industry. To
understand how imposing these additional costs on iTunes would be
incongruous with congressional intent—not to mention common sense—
one must look to the original purpose of the interactive/non-interactive
distinction.
2.The Interactive/Non-Interactive Distinction Does not Make Sense
Here
As enacted, the DPRA defined an “interactive service” as “one that
enables a member of the public to receive, on request, a transmission of a
particular sound recording chosen by or on behalf of the recipient.”176 The
context in which this distinction was made must be appreciated. The DPRA
was passed in 1995, when “the possible role of the still commerciallynascent internet in the transmission of music was not yet significant enough
to be considered.”177 The eleventh-hour DMCA amendment came only
three years later. At that time, the largest threat to the record industry posed
by digital technology was its potential to displace record sales without
providing any counterbalancing compensation. Essentially, “if an internet
user could listen to music broadcast over, or downloaded from, the internet
for free, the recording industry worried that the user would stop purchasing
music.”178
Congress recognized that interactive transmission services were most
likely to erode record sales because these services “enable a member of the
public to receive, on request, a digital transmission of the particular
recording that person wants to hear.”179 The House also considered the fact
license of the right of public performance under section 106(6) [17 USCS § 106(6)], an
interactive service may not publicly perform a sound recording unless a license has been
granted for the public performance of any copyrighted musical work contained in the sound
recording.”).
176
17 U.S.C. § 114(j)(4) (1995).
177
Bonneville, 347 F.3d at 488 n.4.
178
Arista Records, 578 F.3d at 153.
179
See S. REP. NO. 104-128, at 35 (1995) (referring to “so-called ‘celestial jukebox’ ‘payper-listen’ or ‘audio-on-demand’ services”); see also Jane C. Ginsburg, Copyright
Legislation for the “Digital Millennium,” 23 COLUM.-VLA J.L. & ARTS 137, 167 (1999)
(“the more advance information the user has about the digital transmission, the more the
transmission facilitates a user’s private copying … of the recorded performance, or, at
least, enables the user to substitute listening to the targeted performance for purchasing a
copy of it”).
192
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that “[s]ubscription and interactive audio services can provide multichannel offerings of various music formats in CD-quality recordings,
commercial free and 24 hours a day.” In essence, then, the distinction
between interactive and non-interactive transmission services was a
distinction between services that promote the sales of pre-recorded music,
such as traditional radio broadcasts, and those services that potentially
displace record sales.
But technology—not to mention the internet’s role in our society—has
changed significantly since 1998. Now, iTunes provides interactive digital
transmissions that actually promote record sales. In fact, the interactive
nature of the iTunes platform provides the key to its success. These samples
pose no threat to sales because a typical consumer does not satisfy his desire
for a certain song by repeatedly listening to the same, short sample of that
song. Instead, the samples promote record sales in a number of ways. For
example, the samples could reaffirm a user’s initial desire to own the song;
or, they could introduce the user to new artists. In fact, allowing users to
discover new music remains a major focal point for iTunes. It accomplishes
this goal in two ways. First, “[b]ased on your previous purchases, iTunes
will point you to other music you will enjoy.”180 It also provides
recommendations through its innovative “Genius Sidebar” program, which
works as follows:
Once you opt in to the service, which sends your music library and
usage data to Apple anonymously according to the company, iTunes can
generate a list of music in your library that sounds similar to any song in it,
from which you can make a playlist. The Genius sidebar performs
essentially the same function, except that it draws recommendations from
the iTunes music store. Those recommendations include similar songs, top
albums by the artist, songs by the artist missing from
your collection and
iTunes Essentials collections that include the song.181
These capabilities sound remarkably similar to the potential benefits of
digital technology that Congress recognized as early as 1995:
These new digital transmission technologies may permit consumers to
enjoy performances of a broader range of higher-quality recordings than has
ever before been possible. These new technologies also may lead to new
systems for the electronic distribution of phonorecords with the
authorization of the affected copyright owners. Such systems could increase
180
Apple, iTunes: Learn About the Features of iTunes 9,
http://www.apple.com/itunes/features/#search (last visited Apr. 19, 2010).
181
Eliot Van Buskirk, ITunes Crashes Music Recommendation Party; Rivals Rejoice,
WIRED (Sep. 9, 2008), available at http://www.wired.com/listening_post/2008/09/stevejobs-anno/.
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the selection of recordings available to consumers, and make
it more
convenient for consumers to acquire authorized phonorecords.182
The interactive/non-interactive distinction made sense in the twentieth
century. But by providing an “interactive service” that actually fuels record
sales, iTunes calls into question the continuing viability of the
interactive/non-interactive distinction vis-à-vis online retailers. Thus,
subjecting iTunes and other online retailers to an additional publicperformance-right licensing regime for the thirty-second song samples is
nonsensical, inefficient, and plainly counter-productive. And as I will argue
in Part V, this result should be changed via legislative action.
V. CONGRESS SHOULD AMEND THE COPYRIGHT ACT
In determining which course of action to take in this situation,
decision-makers should be guided by the fundamental, utilitarian view of
that drives copyright law in America. They should seek to produce a result
that makes sense and does not hamper the growth of an innovative retail
model. Here, the best way to achieve this result is through legislative action.
Therefore, Congress should amend the Copyright Act in several respects to
ensure the continued growth in digital record sales.
A.Pure Downloads: Congress Should Amend The Definition of
“Perform”
Part III of this paper argued that proper statutory interpretation reveals
a requirement that, to “perform” a work under the Act, the copyrighted
work must be made contemporaneously perceptible to the user through the
transmission. Because the transmission of data files containing the musical
composition itself does not allow for the work to be made audible, it
follows that, as a matter of law, pure downloads are not “performances”
under the Act. As a result, these transmissions cannot implicate the public
performance right. Analyzing the issue from a policy perspective also
brings one to the same conclusion. If we assume the opposite—that a pure
download is a public performance—iTunes would have to pay a mechanical
license to the musical composition copyright owner for the reproduction
and distribution of the copy and an additional license for the public
performance of the work even though the work is completely inaudible to
the user during the transmission. Since any performance that occurs in this
case has no economic value,183 such a rule would allow copyright holders to
182
183
S. REP. NO. 104-128, at 10 (1995).
See supra Part III(B)(2).
194
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charge twice for the same utility-producing transmission. Such “double
dipping” should not be allowed.
While one court in the Second Circuit has adopted a “contemporaneous
perception” requirement, it remains to be seen if this reasoning will spread
to other jurisdictions. Accordingly, Congress should amend the definition of
“to perform” to explicitly require contemporaneous sensory perception.
This could be accomplished by looking to the definition of “perform” as it
relates to motion pictures.184 With regards to musical works, the Act
currently provides the following definition: “To ‘perform’ a work means to
recite, render, play, dance, or act it, either directly or by means of any
device or process.”185 To firmly establish the “contemporaneous
perception” requirement, I propose adding a unique definition of “perform”
for musical works that would read as follows: “To ‘perform’ a musical
work means to recite, render, play, dance, or act it, either directly or by
means of any device or process, so as to make the sounds accompanying it
audible.”186
Of course, no statutory language is impervious to litigation. One can
imagine disputes over this definition, as well as over the limits of
“contemporaneous.” For example, suppose a user downloaded a song and
then immediately played it on his computer. A PRO could argue that this
two-step process should be collapsed and viewed as one. After all, the user
downloaded and listened to the song within a matter of seconds. And since
playing a song over a computer’s speakers is certainly a “performance,” the
contemporaneous perception requirement is met. However, this logic
erroneously conflates two legally distinct transactions and ignores clear
statutory language. In analyzing whether the public performance right is
implicated, the download itself must be viewed as a completely separate
transaction from the user’s private performance of the transferred file. This
distinction was clearly envisioned by Congress: “Although any act by
which the initial performance or display is transmitted, repeated, or made to
recur would itself be a ‘performance’ or ‘display’ under the bill, it would
not be actionable as an infringement unless it were done ‘publicly,’ as
defined in section 101. Certain other performances and displays, in addition
184
See 17 U.S.C. § 101 (2009) (“To ‘perform’ a work” means, “in the case of a motion
picture or other audiovisual work, to show its images in any sequence or to make the
sounds accompanying it audible.”).
185
Id.
186
Id. While “progressive” downloads fall outside the scope of this paper, the law should
provide an exemption for these and other potential hybrid transmissions in cases where
they follow a legal purchase of the work. Such transmissions can only occur after the user
legally purchases the song and, therefore, cannot threaten to displace the sale of the work.
However, I believe other statutory provisions, such as Fair Use under Section 107, can
sufficiently protect these transmissions.
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to those that are ‘private,’ are exempted or given qualified copyright
control under sections 107 through 118.”187 Further, it is explicitly
mandated by the Act, which requires the “performance” to take place during
the transmission itself.188
To preempt these potential disputes, I also propose amending the
Transmit Clause so that “[t]o perform or display a work ‘publicly’” will
mean: “to transmit or otherwise communicate a performance . . . of the
work to a place specified by clause (1) or to the public, by means of any
device or process . . . but only if the performance transmitted or otherwise
communicated produces the work’s intended sensory perception at the time
of transmission or communication. This will ensure that the
contemporaneous sensory perception requirement be applied only to the
transmission of the work itself.
While establishing bright-line rules is often a risky proposition when
dynamic technology is involved, in the case of legally purchased pure
downloads, the copyright holders are already protected by sections 106(1)
and 106(3) and, thus, already receive compensation for their creative efforts
each time a song is downloaded. Allowing copyright holders to receive
duplicative royalties for these transmissions drastically alters the longstanding purpose of the public performance right: to provide artists with a
means to ensure economic remuneration for their works when technology
allows certain performances to displace the market for copies of their
works. Thus, this amendment would foster the growth of a revolutionary
technology whose potential for the recording industry is unbounded while
also reinforcing America’s fundamental, utilitarian view of copyright.
B.Thirty-Second Samples: Congress Should Amend Section 114
The PROs also argue that iTunes should have to pay for the right to
stream thirty-second samples of songs. As the Act currently stands, there
are legitimate arguments that these samples should be treated as streaming
transmissions over the internet, which are definitively treated as public
performances.189 In addition, because iTunes classifies as an “interactive
service” provider under section 114, it would have to engage in a terribly
inefficient and counter-productive voluntary licensing regime.190 However,
because these short samples promote record sales, this logic runs counter to
187
See H.R. REP. NO. 94-1476, at 63 (1976).
See 17 U.S.C. § 101 (2009) (“[T]o perform a work ‘publicly’” means “to transmit or
otherwise communicate a performance or display of the work to a place specified by clause
(1) or to the public.”) (emphasis added).
189
See supra Part IV(B).
190
See supra Part IV(C).
188
196
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the purpose of the public performance right and common sense. In order to
avoid such a nonsensical result, Congress should amend the Act to provide
iTunes and other online retailers immunity from the voluntary licensing
regime under section 114.
With regards to the public performance of sound recordings “by means
of a digital audio transmission,” section 114 creates a three-tiered licensing
regime.191 As noted, “interactive service” providers must individually
negotiate with each sound recording copyright holder and obtain a license in
the underlying musical composition in order to publicly perform—i.e,
stream—a song.192 However, certain transmissions are completely exempt
from having to license the rights to publicly perform songs. These services
are known as non-interactive, “nonsubscription broadcast” transmissions.
Essentially, they are terrestrial radio broadcasts. Traditional radio
broadcasters pay no royalties to sound recording copyright owners—the
recording industry—because traditionally, as one court explained, “[t]he
recording industry and broadcasters existed in a sort of symbiotic
relationship wherein the recording industry recognized that radio airplay
was free advertising that lured consumers to retail stores where they would
purchase recordings.”193 This exemption was founded in Congress' desire
not to impose "new and unreasonable burdens on radio and television
broadcasters, which often promote, and appear to pose no threat to, the
distribution of sound recordings."194 As discussed above, the same can now
be said for iTunes’ short song samples. Accordingly, iTunes and other
online retailers should receive the same exemption traditionally afforded
terrestrial radio broadcasters. Congress could accomplish this goal by
amending section 114.
One way to do this would be to add an exception to the treatment of
certain “interactive services” under section 114(d)(3) so that the iTunes and
other online retailers are given the non-interactive “nonsubscription
broadcast transmission” treatment afforded radio broadcasters under
114(d)(1). Another way would be to create a fourth tier, what I will call
“interactive promotional transmission services.” If a transmission qualified
under this tier, it would receive immunity from the standard voluntary
licensing regime that all “interactive services” are now subject to. It would
also receive a blanket exemption from all licensing requirements, much like
any non-interactive “nonsubscription broadcast transmission” does now.
This would be the better option for a number of reasons. First, it would
leave the current regime undisturbed with regards to those “interactive”
191
See id.
See id.
193
Bonneville, 347 F.3d at 487.
194
H.R. REP. NO. 104-274, at 14 (1995).
192
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services that actually displace record sales. In this sense, it would reinforce
the underlying purpose of the public performance right. Second, it would
alleviate iTunes from the burdens of an absurd licensing requirement and
avoid the inefficient, counter-productive results such a system would entail.
Lastly, it would reflect the notion that the “interactive” label no longer
carries with it a negative connotation in all circumstances.195 If iTunes’
practice of providing free, thirty-second song samples has shown us
anything, it must be that an interactive service can actually boost record
sales.
VI. CONCLUSION
Until the turn of the twenty-first century, the music industry seemed
unstoppable. Record sales were growing. Costs were falling. And, at its
peak in 1999, the industry’s annual revenues eclipsed fourteen billion
dollars.196 But since then, profits have declined at a rapid clip, due largely to
file-sharing technology that has eroded sales and called into question the
industry’s long-standing business model.197 This model revolved around
one thing: physical record sales. In doing so, it employed on a distribution
model dependent upon tangible sales in traditional, “brick and mortar” retail
stores.
In contrast to the vanishing physical records sales market, the digital
sales market has exploded in recent years. Not only has this market
experienced exponential growth since its inception, it provides a glimpse of
hope for an otherwise gloomy future for the music industry. In fact, some
analysts predict digital sales to surpass physical sales by 2011.198 This
success is due in large part to one retailer, iTunes, which provides
consumers the means to legally purchase and download digital music over
the internet. It also provides thirty-second samples to consumers free-ofcharge in an attempt to boost sales and introduce users to new artists. But
instead of embracing iTunes and leveraging its potential, certain groups are
demanding that iTunes pay additional licensing fees for the alleged
“performance” that occurs with each download and thirty-second song
preview.
However, analysis reveals that imposing such costs would lead to
inefficient, nonsensical, and counter-intuitive results that would conflict
195
See supra Part IV(C)(2).
See John Borland, Music Industry Blames Net for Some Revenue Woes, CNET, Feb. 16,
2001, available at http://news.cnet.com/Music-industry-blames-Net-for-some-revenuewoes/2100-1023_3-252787.html.
197
See supra Part II(A).
198
See id.
196
198
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with the underlying purpose of public performance rights and undermine
the utilitarian foundation upon which American copyright law rests.
Downloads do not constitute public performances under the Act, nor should
they.199 And while the thirty-second previews likely qualify as public
performances under a technical application of the law, such a result should
be avoided.200 Accordingly, I propose a solution that includes a number of
legislative amendments to ensure that no performance licenses will be
required for these activities.
In a broader sense, this battle reflects industry groups that refuse to
come embrace reality. With the industry’s traditional business model all but
buried, these groups are attempting to extract as much as they can from any
source possible. In pursuing this shortsighted agenda, however, they neglect
innovative retailers that provide a means to capitalize on the digital age and
perpetuate the notion of greed so often associated with the record industry.
One may ask why any group that stands to benefit from an innovative
technology’s success would threaten to stymie that technology’s growth.
This is not to say that the music industry should stop trying to find new
ways to make money. Such a move would be to sound its own death knell.
But it should not kill the goose that laid the golden eggs in the process.
199
200
See supra Part III.
See supra Part IV.
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199
The Americans with Disabilities Act, The United
States Anti-Doping Agency, and the Effort Toward an
Equal Opportunity: A Case Study of the United States
Anti-Doping Agency v. George Hartman Matter
Travis Tygart* and Anthony R. Ten Haagen†
TABLE OF CONTENTS
I. INTRODUCTION ................................................................................... 200 II. AN OVERVIEW OF USADA’S ORIGIN, ITS MISSION, AND ITS
RELEVANT PROTOCOLS. ................................................................ 202 III. AN OVERVIEW OF THE AMERICANS WITH DISABILITIES ACT AND THE
REHABILITATION ACT. ................................................................... 203 A. The Americans with Disabilities Act................................................. 203 B. The Rehabilitation Act of 1973 ......................................................... 206 IV. LEGAL ANALYSIS OF THE UNITED STATES ANTI-DOPING AGENCY’S
ANTI-DOPING POLICIES AND WHETHER THEY ARE PROCEDURALLY
AND SUBSTANTIVELY COMPLIANT WITH THE AMERICANS WITH
DISABILITIES ACT........................................................................... 207 A. USADA’s Anti-Doping Policies Are Procedurally Compliant With The
Requirements Of The ADA ................................................................ 207 1. WADA’s TUE Standard is an Individualized Assessment, which the
ADA Requires to Evaluate the Reasonableness, Necessity, and
Safety of a Requested Accommodation. ....................................... 207 2. Requiring Athletes to Submit TUEs Prior to the Use of an Otherwise
Prohibited Substance is Consistent with the ADA. ....................... 209 B. USADA’s Anti-Doping Policies are Substantively Compliant with the
Requirements of the ADA .................................................................. 212 1. The Hartman AAA Panel Determined Hartman did not Suffer from
a Disability. ................................................................................... 212 *
Travis T. Tygart, Esq. is the CEO of the United States Anti-Doping Agency in Colorado
Springs, CO. Please see www.usada.org for more information.
†
Anthony R. Ten Haagen is an attorney with a sports law practice based out of the greater
Boston, Massachusetts area. Please see www.linkedin.com/in/atenhaagen for more
information.
200
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2. Hartman Would Not Have Been Able to Establish Testosterone
Injections were Reasonable or Necessary even if he Proved his
Disability. ...................................................................................... 215 a. Testosterone Injections are not a Reasonable and Necessary
Accommodation for Hypogonadism. ........................................ 215 b. Testosterone Injections are not a Reasonable and Necessary
Accommodation for Erectile Dysfunction Syndrome. .............. 215 c. Testosterone Injections are not a Reasonable and Necessary
Accommodation for Depression. .............................................. 216 3. Even if Hartman Was Able to Prove He Suffered From a Disability,
and Testosterone Injections Were A Reasonable And Necessary
Accommodation, USADA Could Have Demonstrated that the Use
of Testosterone Would Fundamentally Alter the Sport of Judo
and/or Cause an Undue Risk of Harm to Fellow Competitors. .... 216 4. If Hartman had Filed a Timely TUE Application, the Requested
Testosterone Injections Would Have Been Denied for Reasons
Consistent with the ADA Analysis Above.................................... 217 V. CONCLUSION ....................................................................................... 218 I. INTRODUCTION
George Hartman solidified his reputation as a talented national-level
judo athlete during the 2000 calendar year by winning both the U.S.
National Collegiate Championships and the Amateur Athletic Union U.S.
Open National Championships. However, in the following three years,
Hartman plateaued and failed to make an impact at the international level.
In the summer of 2003, his coach and physician, Dr. Walter VanHelder,
diagnosed him with hypogonadism, erectile dysfunction syndrome, and
depressionall the alleged result of low testosterone levels. Dr. VanHelder
elected to treat these disorders with testosterone injections, and Hartman
closed out the year by winning a gold medal at the Pan American Masters
competition and by becoming the second ranked U.S. judo athlete in the
100 kg weight class.
After beginning his testosterone regimen, Hartman tested positive for
exogenous testosterone, a performance-enhancing substance.1 While
Hartman and Dr. VanHelder eventually claimed the testosterone was for the
treatment of Hartman’s alleged medical conditions, at no time did Hartman
disclose his use of testosterone when tested or submit a Therapeutic Use
1
See United States Anti-Doping Agency v. George Hartman, American Arbitration
Association: N. Am. Court of Arbitration for Sport Panel, AAA 30 190 00900 05, 1 (June
19, 2006) [hereinafter USADA v. Hartman Decision].
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201
Exemption (“TUE”) to the United States Anti-Doping Agency (“USADA”)
requesting pre-competition clearance for his use of a prohibited substance.2
Hartman argued he did not violate the applicable sport anti-doping rules
because his use of synthetic testosterone was protected by the Americans
with Disabilities Act3 (“ADA”) and its precursor, the Rehabilitation Act of
1973 (“Rehabilitation Act”).4 The American Arbitration Association’s
North American Court of Arbitration for Sport Panel (“AAA Panel”) found
that “[Hartman] failed to sustain his burden of proof that he suffers from [a
disability]” under the ADA.5 Therefore, the AAA Panel was able to ban
Hartman from competition for the full two-year period allowed under the
World Anti-Doping Code (“WADC”) without a full legal and factual
analysis of Hartman’s ADA claim. Nevertheless, the issue posed by
Hartman’s claim as to whether USADA’s anti-doping policies are
compliant with the ADA is a crucial one for all athletes going forward as
USADA seeks to continue its fight against the use of prohibited
performance-enhancing substances in sport.
There is little doubt that the ADA can apply to athletics in certain
situations.6 Professional athletes are typically employees covered by Title I
of the ADA.7 High School and Collegiate athletics are typically run by
public entities covered by Title II of the ADA.8 Other athletes are protected
by Title III because courts have defined certain fields of play, such as the
golf course in PGA Tour, Inc. v. Martin,9 as public accommodations.10
The ADA may not apply to USADA since it does not employ the
Olympic athletes it tests, is not a public entity, and does not sanction
athletic events. Regardless of the ADA’s applicability, however, this article
will describe how USADA and the ADA share the common goal of
maintaining a level playing field for all athletes. USADA accomplishes this
goal by protecting the competition rights of clean athletes. The ADA
accomplishes this goal by providing assistance to individuals who, if not for
a specific disability, would be fully capable of participating in a given
activity. After providing an overview of USADA’s drug testing protocols
and the operation of the ADA, this article will conclude that USADA’s drug
2
See id. at 1.
42 U.S.C. § 12101 (2000).
4
29 U.S.C. § 701 (2000).
5
USADA v. Hartman Decision, at 1.
6
For an in-depth explanation of each Title of the ADA, see infra Part III.A.
7
See Henry T. Greely, Disabilities, Enhancements, and the Meanings of Sports, 15 STAN.
L. & POL’Y REV. 99, 103 (2004).
8
See id.
9
532 U.S. 661 (2001).
10
See Greely, supra note 7, at 103.
3
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testing protocols are able to further this common goal in a manner that is
procedurally and substantively compliant with the ADA because USADA
offers an individual assessment to athletes who request permission to use an
otherwise prohibited substance for the treatment of an acute medical
condition.
II. AN OVERVIEW OF USADA’S ORIGIN, ITS MISSION, AND ITS
RELEVANT PROTOCOLS.
Before the USADA opened in late 2000, doping control for the
Olympic sports in the United States was governed by the National AntiDoping Program (“NADP”). Under the NADP program, each sport’s
National Governing Body (NGB)11 was required to prosecute its own
athletes for doping violations.12 In contrast, USADA was set up as an
independent non-profit, non-governmental agency and was given
contractual authority by the United States Olympic Committee (“USOC”) to
initiate a national anti-doping program focused on testing, adjudication,
education, and research.13 By shifting the prosecutorial role from the NGBs
to USADA, the NGBs were no longer faced with the inherent conflict of
assembling the best teams possible on the one hand, and policing their own
athletes on the other.14
USADA incorporates the mandatory provisions of the World AntiDoping Code (“WADC”) into its Protocol for Olympic and Paralympic
Movement Testing.15 As a result, USADA imposes strict liability sanctions
on athletes who test positive for prohibited substances.16 Athletes may face
a two-year period of ineligibility for their first violation of the WADC.17 If
aggravating circumstances are present, the period may be “increased up to a
maximum of 4 years.”18 Subsequent offenses may lead to a lifetime ban.19
11
Examples of NGBs include USA Swimming, USA Hockey, USA Boxing, etc.
See UNITED STATES OLYMPIC COMMITTEE NATIONAL ANTI-DOPING PROGRAM POLICIES
AND PROCEDURES (on file with authors).
13
See United States Anti-Doping Agency, USADA History,
http://www.usantidoping.org/about/history.aspx (last visited Oct. 27, 2010).
14
Dionne L. Koller, Does the Constitution Apply to the Actions of the United States AntiDoping Agency?, 50 ST. LOUIS U. L.J. 91, 98 (2005) (citing White House Task Force on
Drug Use in Sports, Proceedings: First Meeting of the White House Task Force on Drug
Use in Sports 36 (Dec. 7, 2000) (statement of Dr. Johann Olav Koss)).
15
U.S. Anti-Doping Agency, FAQs, http://www.usantidoping.org/resources/faqs.aspx (last
visited Oct. 27, 2010).
16
See WORLD ANTI-DOPING CODE § 2.1.1 (2009), http://www.wada-ama.org.
17
Id. at §§ 10.2; 10.7.
18
Id. at § 10.6.
19
Id. at §§ 10.2; 10.7.
12
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In certain circumstances, when an athlete can demonstrate he or she bears
either “no fault or negligence or no significant fault or negligence,” the
period of ineligibility may be reduced or even eliminated.20
The WADC provides for individuals with illnesses or conditions that
require otherwise prohibited substances for treatment. Athletes in these
situations must request a TUE thirty days before participating in certain
events.21 Exceptions exist for retroactive approval when athletes take
prohibited substances for emergency treatment of an acute medical
condition or other exceptional circumstances.22
When an athlete tests positive for a prohibited substance, an AntiDoping Review Board composed of medical, technical, and legal experts
recommends to USADA whether there is sufficient evidence of doping to
proceed.23 If so, the athlete can request a hearing before a single arbitrator
or a panel of three arbitrators selected from the North American Court of
Arbitration for Sport (the “AAA Panel”) under the umbrella of the
American Arbitration Association.24 Should the athlete choose to challenge
the decision of the AAA Panel, he or she can appeal to a final and binding
hearing with the Court of Arbitration for Sport (“CAS”).25
III. AN OVERVIEW OF THE AMERICANS WITH DISABILITIES ACT AND
THE REHABILITATION ACT.
A. The Americans with Disabilities Act
The Americans with Disabilities Act (“ADA”) was passed in 1990 to
provide a “clear and comprehensive national mandate for the elimination of
discrimination against individuals with disabilities.”26 The ADA seeks to
effectuate its mandate by offering “clear, strong, consistent, enforceable
standards addressing discrimination against individuals with disabilities.”27
The ADA precludes discrimination against people with disabilities by
20
Id. at § 10.5.
INTERNATIONAL STANDARD FOR THERAPEUTIC USE EXEMPTIONS § 8.3 (2010), available
at http://www.wada-ama.org/Documents/World_Anti-Doping_Program/WADP-ISTUE/WADA_ISTUE_2010_EN.pdf.
22
See id. at § 4.3.
23
UNITED STATES ANTI-DOPING AGENCY PROTOCOL FOR OLYMPIC AND PARALYMPIC
MOVEMENT TESTING, § 11 (2009) [hereinafter USADA PROTOCOL].
24
AMERICAN ARBITRATION ASSOCIATION SUPPLEMENTARY PROCEDURES FOR THE
ARBITRATION OF ANTI-DOPING RULE VIOLATIONS, § 2-12 (2009) [hereinafter AAA
PROCEDURES].
25
USADA PROTOCOL, supra note 23, § 15(b).
26
42 U.S.C. § 12101(b) (2000).
27
Id.
21
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employers (Title I),28 public entities (Title II),29 and public accommodations
(Title III).30
In response to several Supreme Court decisions at the turn of the
century,31 Congress passed the ADA Amendments Act of 2008 to clarify
the breadth of the term “disability.” Currently, the ADA defines disability
as “a physical or mental impairment that substantially limits one or more
major life activities of [an] individual.”32 Major life activities “include, but
are not limited to, caring for oneself, performing manual tasks, seeing,
hearing, eating, sleeping, walking, standing, lifting, bending, speaking,
breathing, learning, reading, concentrating, thinking, communicating, and
working.”33 Major life activities also include certain bodily functions, such
as the “functions of the immune system, normal cell growth, digestive,
bowel, bladder, neurological, brain, respiratory, circulatory, endocrine, and
reproductive functions.”34 The amended ADA states that the definition of
disability is to be construed in favor of broad coverage of individuals, and
the determination of whether impairment substantially limits a major life
activity shall be made without regard to the ameliorative effects of most
mitigating measures.35
Under Title I of the ADA, “no [employer] shall discriminate against a
qualified individual on the basis of disability in regard to job application
procedures, the hiring, advancement, or discharge of employees, employee
compensation, job training, and other terms, conditions and privileges of
employment.”36 A qualified individual is someone who, with or without
reasonable accommodation, can perform the essential functions of the
employment position at issue, where consideration is given to the
28
Id. at § 12111.
Id. at § 12131.
30
Id. at § 12181.
31
See, e.g., Toyota Motor Mfg., Kentucky, Inc. v. Williams, 534 U.S. 184 (2002) (holding
the terms “substantially” and “major” in the definition of disability under the ADA “need
to be interpreted strictly to create a demanding standard for qualifying as disabled” and that
to be substantially limited in performing a major life activity under the ADA, “an
individual must have an impairment that prevents or severely restricts the individual from
doing activities that are of central importance to most people’s daily lives”).
32
42 U.S.C. § 12102(1)(A) (2000).
33
Id. at § 12102(2)(A).
34
Id. at § 12102(2)(B).
35
Id. at § 12102(4). For example, “mitigating measures such as medication, medical
supplies, . . . low-vision devices” not including ordinary eyeglasses or contact lenses,
“prosthetics . . . hearing aids . . . mobility devices,” and “reasonable accommodations or
auxiliary aids or services” shall not be considered in determining whether a disability
substantially limits a major life activity. Id.
36
Id. at § 12112(a).
29
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205
employer’s judgment as to what those functions are.37 Notably, when an
employee uses illegal drugs and the employer brings disciplinary action
accordingly, the employee does not fall within the definition of a qualified
individual.38 The ADA obligates employers to make a reasonable
accommodation to all qualified individuals unless the employer can
demonstrate the accommodation would impose an “undue hardship” on the
operation of the business.39
Title II of the ADA states: “no qualified individual with a disability
shall, by reason of such disability, be excluded from participation in or be
denied the benefits of the services, programs, or activities of a public entity,
or be subjected to discrimination by any such entity.”40 Title II defines a
“qualified individual” as someone who, with the assistance of a reasonable
modification, “meets the essential eligibility requirements for the receipt of
services or the participation in programs or activities provided by a public
entity.”41 A “public entity” is defined as any state or local government or
any department, agency, or instrumentality of any state or local
government.42
Title III of the ADA states “no individual shall be discriminated against
on the basis of disability in the full and equal enjoyment of the goods,
services, facilities, privileges, advantages, or accommodations of any place
of public accommodation by any person who owns, leases (or leases to), or
operates a place of public accommodation.”43
The term “public
accommodation” is defined by a lengthy list of categories including places
of lodging, restaurants, bars, auditoriums, grocery stories, laundromats,
banks, hospitals, museums, parks, and private schools.44 Most relevant for
the purposes of this article, the definition of a public accommodation under
the statute also includes “gymnasium[s], health spa[s], bowling alley[s],
golf course[s], [and] other places of exercise or recreation.”45
To succeed on a Title III claim, an individual with a disability must
demonstrate a requested accommodation is both reasonable and necessary
to afford the individual access to the public accommodation.46 If the
individual is successful, the public accommodation must offer the requested
37
Id. at § 12111(8).
Id. at § 12114(a).
39
Id. at § 12112(b)(5)(A).
40
Id. at § 12132.
41
Id. at § 12131(2).
42
Id. at § 12131(1).
43
Id. at § 12182(a).
44
Id. at § 12181(7).
45
Id. at § 12181(7)(L).
46
See id. at § 12182(b)(2)(A).
38
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accommodation unless the public accommodation can demonstrate the
requested accommodation either (1) fundamentally alters the nature of the
activity the requested accommodation is sought for47 or (2) creates an undue
health or safety risk to others.48 As applied to sport, the Supreme Court has
found that a requested accommodation might fundamentally alter athletic
competition in two ways.49 First, “[i]t might alter such an essential aspect
of the [sport] . . . that it would be unacceptable even if it affected all
competitors equally; changing the diameter of [a golf] hole from three to six
inches might be such a modification.”50 Second, the accommodation might
take the form of “a less significant change that has only a peripheral impact
on the game itself [but] might nevertheless give a disabled player, in
addition to access to the competition as required by Title III, an advantage
over others and, for that reason, fundamentally alter the character of the
competition.”51
B. The Rehabilitation Act of 1973
The Rehabilitation Act of 1973 (“Rehabilitation Act”) states that
disabled individuals may not be “excluded from participation in, be denied
the benefits of, or be subjected to discrimination under any program or
activity receiving Federal financial assistance [solely because of his or her
disability],” as long as their requested accommodation is reasonable and
necessary.52
The Rehabilitation Act represented progress for Americans living with
disabilities, but Congress sought to further expand disability protection
when it passed the Americans with Disabilities Act (“ADA”) nearly 20
years later. Because the ADA’s scope encompasses the narrower focus of
47
See id. at § 12182(b)(2)(A)(ii) (stating that discrimination is “a failure to make
reasonable modifications in policies, practices, or procedures, when such modifications are
necessary to afford such goods, services, facilities, privileges, advantages, or
accommodations to individuals with disabilities, unless the entity can demonstrate that
making such modifications would fundamentally alter the nature of such goods, services,
facilities, privileges, advantages, or accommodations”) (emphasis added).
48
See id. at § 12182(b)(3) (stating that “Nothing in this subchapter shall require an entity to
permit an individual to participate in or benefit from the goods, services, facilities,
privileges, advantages and accommodations of such entity where such individual poses a
direct threat to the health or safety of others. The term ‘direct threat’ means a significant
risk to the health or safety of others that cannot be eliminated by a modification of policies,
practices, or procedures or by the provision of auxiliary aids or services.”) (emphasis
added).
49
Martin, 532 U.S. at 682.
50
Id.
51
Id. at 682–83.
52
29 U.S.C. § 794(a) (2002).
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207
the Rehabilitation Act, this article asserts that any demonstration of
USADA’s compliance with the ADA’s policies will implicitly demonstrate
USADA’s compliance with the Rehabilitation Act’s policies as well.
IV. LEGAL ANALYSIS OF THE UNITED STATES ANTI-DOPING
AGENCY’S ANTI-DOPING POLICIES AND WHETHER THEY ARE
PROCEDURALLY AND SUBSTANTIVELY COMPLIANT WITH THE AMERICANS
WITH DISABILITIES ACT
Application of the ADA to USADA’s anti-doping operation is
unnecessary because the analytical standards applicable under the ADA and
the WADC standards for obtaining a TUE are in all material respects the
same.53 There is “no need to confuse the issues” because, as explained
below, the procedural and substantive analysis of a given case will not
change regardless of whether the ADA or the TUE standard is applied.54
A. USADA’s Anti-Doping Policies Are Procedurally Compliant With
The Requirements Of The ADA
1. WADA’s TUE Standard is an Individualized Assessment, which the
ADA Requires to Evaluate the Reasonableness, Necessity, and Safety of a
Requested Accommodation.
The ADA requires an “individual assessment” to determine whether an
individual suffers from a disability and whether the individual’s requested
accommodation is reasonable, necessary, consistent with the nature of the
accommodation sought, and safe.55 The TUE standard functions similarly,
providing athletes with the same kind of “individual assessment” as is
required by the ADA.
A timely submitted TUE will be granted where:
(a)The Athlete will experience a significant impairment to health if the
prohibited substance or prohibited method were to be withheld in the course
of treating an acute or chronic medical condition.
53
Brief of Claimant at 12, United States Anti-Doping Agency v. George Hartman, AAA 30
190 00900 05 (April 7, 2006) [hereinafter USADA v. Hartman Claimant Brief].
54
Id.
55
See Martin, 532 U.S. at 688 (stating an individualized inquiry under the ADA must
determine whether a specific modification for a particular person’s disability would be
reasonable under the circumstances as well as necessary for that person); see also
Anderson v. Little League Baseball, Inc., 794 F. Supp. 342, 345 (D. Ariz. 1992) (stating the
Supreme Court has found an individualized assessment under the ADA must balance the
interests of people with disabilities against legitimate concerns for public safety).
208
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(b)The therapeutic use of the prohibited substance or prohibited
method would produce no additional enhancement of performance other
than that which might be anticipated by a return to a state of normal health
following the treatment of a legitimate medical condition. The use of any
prohibited substance or prohibited method to increase “low-normal” levels
of any endogenous hormone is not considered an acceptable therapeutic
intervention.
(c)There is no reasonable therapeutic alternative to the use of the
otherwise prohibited substance or prohibited method.
(d)The necessity for the use of the otherwise prohibited substance or
prohibited method cannot be a consequence, wholly or in part, without a
TUE, or a substance or method which was prohibited at the time of use.56
A comparison of the ADA and the TUE standard shows they are
procedurally identical in all material respects. First, the TUE standard
requires USADA to consider the health of the athlete absent use of the
requested substance for the treatment of an acute or chronic condition. This
is analogous to an evaluation under the ADA of whether the alleged
condition substantially impacts a major life activity so as to qualify as a
disability.57 Second, the TUE standard requires USADA to consider
whether alternative treatments beyond use of the prohibited substance exist.
This is analogous to an evaluation under the ADA of the reasonableness and
necessity of a requested accommodation.58 And third, the TUE standard
requires USADA to consider whether use of the prohibited substance would
produce enhancement of performance beyond a mere return to a state of
normal health. This is analogous to an evaluation under the ADA of
whether the requested accommodation would fundamentally alter the sport
and/or create an undue health or safety risk.
In many instances, as implied by the Supreme Court in Martin, use of
performance-enhancing substances might fundamentally alter the sport at
issue by providing the disabled athlete with an unfair advantage.59 For
instance, a baseball player on steroids likely has a distinct advantage over
56
INTERNATIONAL STANDARD FOR THERAPEUTIC USE EXEMPTIONS § 4.1 (2010), available
at http://www.wada-ama.org/Documents/World_Anti-Doping_Program/WADP-ISTUE/WADA_ISTUE_2010_EN.pdf.
57
See USADA v. Hartman Claimant Brief, supra note 53, at 14.
58
See id. at 15.
59
See 532 U.S. at 683.
Issue 1
2/7/2011 9:49 AM
209
non-steroid abusers in terms of both reaction time and strength.60 These
changes “unfairly alter the conditions of competition.”61 Further, in
physical contact sports such as football, boxing, or judo, it may never be
appropriate for a competitor to take a strength building performanceenhancing substance because it would impose a great danger on other
competitors.62 Thus, a comparison of the operative language of the ADA
and the International Standard for Therapeutic Use Exemptions
demonstrates the “individual assessment” offered in each context is the
same.63
2. Requiring Athletes to Submit TUEs Prior to the Use of an Otherwise
Prohibited Substance is Consistent with the ADA.
An athlete seeking an accommodation for the use of a prohibited
substance must formally request a TUE thirty days before participating in
certain events.64 Retroactive approval will only be granted in situations
where a prohibited substance is used for the emergency treatment of an
acute medical condition or where certain other exceptional circumstances
exist.65
In 2006, Olympic track star Justin Gatlin tested positive for a
prohibited substance for the second time. Previously, after failing to submit
a timely TUE, Gatlin tested positive in 2001 for a prohibited substance
intended to treat Attention Deficit Disorder, a medical condition that
qualified him as disabled under the ADA. As a result, Gatlin was subject to
an extended sanction under the WADC for his 2006 offense because of his
prior positive test in 2001. As part of its decision, the AAA Panel in
Gatlin's second case held that the extended sanction did not violate the
ADA. However, in his dissenting opinion, Arbitrator Christopher Campbell
argued Gatlin’s request for a TUE should be allowed at any time, even after
the 2001 positive test occurred.66 Arbitrator Campbell cited Humphrey v.
60
Baseball Crank: Baseball 2005 Archives,
http://baseballcrank.com/archives2/baseball_2005/ (Blog post dated January 4, 2005).
61
George Mitchell. Report to the Commissioner of Baseball of an Independent
Investigation into the Illegal Use of Steroids and Other Performance Enhancing
Substances by Players in Major League Baseball. Pg. 12. December 13, 2007 (quoting
George F. Will, Barry Bonds' Enhancement, NEWSWEEK, May 21, 2007, at 82).
62
Cf. USADA v. Hartman Claimant Brief, supra note 53, at 18.
63
See id. at 15.
64
See INTERNATIONAL STANDARD FOR THERAPEUTIC USE EXEMPTIONS § 8.3 (2010),
available at http://www.wada-ama.org/Documents/World_Anti-Doping_Program/WADPIS-TUE/WADA_ISTUE_2010_EN.pdf
65
See id. at § 4.3.
66
See United States Anti-Doping Agency v. Justin Gatlin, AAA No. 30 190 00170 07, 1-4
210
2/7/2011 9:49 AM
Memorial Hospital Association to support the proposition that the duty to
accommodate is a continuing one.67
Significantly, Humphrey also stands for the proposition that the
obligation to accommodate does not start until the entity at issue becomes
“aware of the need for accommodation.”68 When the duty to accommodate
arises in the context of Title I, “both the employee and the employer must
communicate, exchange essential information and not delay or obstruct the
process.”69 The duty to accommodate, however, cannot possibly occur
before the employee invokes this interactive process.70 In Martin, the
Supreme Court explained that there is a similar obligation to provide
affirmative notice of a requested accommodation in the context of Title
III.71 In summary, “[t]he duty to provide a reasonable accommodation is
not triggered unless a specific demand for accommodation has been
made,”72 and an ADA plaintiff has “some burden to be specific about the
accommodation [he or] she require[s].”73
What the ADA does not require, however, is for qualified individuals
to make their disabilities known if they prefer to keep them private. In
other words, qualified individuals are not required to seek accommodation.
A qualified individual is free to make do with his or her disability and/or try
and take private steps to address his or her limitations. The only
repercussion for choosing privacy is the forfeiture of the qualified
individual’s right to a reasonable and necessary accommodation under the
ADA. Of course, the moment the qualified individual formally requests a
reasonable and necessary accommodation, his or her right thereto is
effectively restored.
In the context of athletics, the TUE standard goes one step further than
the ADA by requiring athletes to request reasonable accommodation prior
to using a prohibited substance in certain events. Unlike situations where
the ADA typically applies, an athlete does not have the option of concealing
his or her use of a prohibited substance (i.e. an accommodation) for the
(2008) (Campbell, Arb., dissenting).
67
See id. at 16-17 (Campbell, Arb., dissenting) (citing Humphrey, 239 F.3d at 1138).
68
See Humphrey, 239 F.3d at 1137 (emphasis added); accord Smith v. Midland Brake,
Inc., 180 F.3d 1154, 1179 (10th Cir. 1999).
69
Vawser v. Fred Meyer, Inc., 19 Fed. App’x. 722, 723 (9th Cir. 2001) (citing Barnett v.
U.S. Air, Inc., 228 F.3d 1105, 1114-1115 (9th Cir. 2000) (en banc), cert. granted in part
sub nom. US Airways, Inc. v. Barnett, 532 U.S. 970 (2001))
70
See Smith, 180 F.3d at 1179.
71
Martin, 532 U.S. at 691.
72
Gaston v. Bellingrath Gardens & Home, Inc., 167 F.3d 1361, 1363 (11th Cir. 1999)
(citing Wood v. President and Trustees of Spring Hill College, 978 F.2d 1214, 1222 (11th
Cir. 1992)).
73
Freadman v. Metropolitan Property and Cas. Ins. Co., 484 F.3d 91, 104 (1st Cir. 2007).
Issue 1
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211
purpose of attempting to keep his or her medical condition (i.e. disability)
private. Athletes must affirmatively make their requested accommodation
known or they risk penalty—even if the TUE would have been granted.74
The Supreme Court implicitly approved the TUE approach in Martin.75
Martin, a talented golfer, suffered from a medical condition that precluded
him from walking a golf course. He requested that the PGA Tour
accommodate him by altering its rules to allow him to drive a golf cart
during tour events. The PGA Tour declined, and Martin brought his ADA
claim in Federal Court.
The United States Supreme Court made clear in Martin that Congress
intended that entities like the PGA give individualized attention to talented
disabled athletes by modifying the rules to allow them access and to weigh
the purpose of the modification before determining whether the
accommodation is allowed.76 Of course, if the athlete waited to request an
accommodation until after he or she was caught, the individualized
balancing procedure intended for use by Congress would be rendered
ineffective. The point of balancing prior to the competition is to ensure a
level playing field. If the athlete were allowed to request a TUE after the
fact, it would detract from the spectacle of sport because fans would not
know whether live performances were genuine. After all, not all
enhancements are as visible as a golf cart.
The rationale behind the notice obligations under the ADA is fairness.
For example, in the context of Title I, an employer should not be held
accountable through litigation for its failure to accommodate a disabled
employee when the employer did not know accommodation was needed.
Allowing ADA claims to advance under such circumstances would provide
enticement for an employee to lure its employer into a legal trap-door with
the hope of securing a substantial damages verdict. Assuming the presence
of an actual disability that precludes the employee’s case from dismissal,
the employee has little incentive to refrain from rolling those dice.
Similar logic is applicable in the context of the TUE standard.
USADA requires athletes to request a TUE thirty days prior to using a
prohibited substance in certain events. If a TUE did not have to be
submitted in advance, it would create an incentive for athletes to cheat until
they were caught, and then claim an exemption under the ADA through
USADA’s prescribed arbitration process after the fact.77 While the TUE
74
See INTERNATIONAL STANDARD FOR THERAPEUTIC USE EXEMPTIONS § 8.4 (2010),
available at http://www.wada-ama.org/Documents/World_Anti-Doping_Program/WADPIS-TUE/WADA_ISTUE_2010_EN.pdf
75
See Martin, 532 U.S. at 691.
76
Id. (emphasis added).
77
See USADA v. Hartman Claimant Brief, supra note 53, at 23.
212
2/7/2011 9:49 AM
process may curtail certain privacy rights of athletes, precluding the above
scenario is a compelling justification for the limitation. Among the many
problems with allowing an athlete to cheat until he or she is caught, and
then claim an exemption under the ADA, include: (1) as mentioned above,
ex-post assessment detracts from the spectacle of viewing live-action sport;
(2) the uncertainty the athlete would ever be caught; (3) the ADA applies
exclusively to the United States, thus American athletes would possess a
mechanism for cheating not available in other countries; and (4) the use of
prohibited substances without providing notice will cause an undue health
or safety risk to other athletes due to the physicality of many competitions.78
Ultimately, “[c]ontending that [one] has been discriminated against through
the application of sport anti-doping rules when, in fact, [one] ignored the
TUE processes by which his [or her] disability claim could have been
assessed and potentially addressed is truly ‘the pot calling the kettle
black.’”79
B. USADA’s Anti-Doping Policies are Substantively Compliant with
the Requirements of the ADA
1. The Hartman AAA Panel Determined Hartman did not Suffer from a
Disability.
The Hartman matter is demonstrative of how USADA’s anti-doping
policies are substantively compliant with the requirements of the ADA. On
March 2, 2005, George Hartman tested positive for a performanceenhancing substance. At no time prior to his positive test did Hartman
submit a TUE to USADA requesting accommodation for his use of
synthetic testosterone. Hartman had ample time to apply for the TUE. He
began receiving testosterone injections on July 21, 2003, and the TUE
standard only requires athletes to file requests 30 days prior to a
competition.
Nevertheless, Hartman argued he should not be suspended from
competition because his use of synthetic testosterone was protected under
the ADA and its precursor, the Rehabilitation Act of 1973. Because the
AAA Panel found “[Hartman] failed to sustain his burden of proof that he
suffers from ‘a physical or mental impairment that substantially limits one
or more of [his] major life activities,’” the AAA Panel banned Hartman
from competition for the full two-year period allowed under the WADC
without analyzing the full ADA issue.80
78
See id. at 24.
Id. at 16.
80
Id. at 15.
79
Issue 1
2/7/2011 9:49 AM
213
After issuing its decision, the AAA Panel released its formal findings
of fact and conclusions of law related to the medical issues at stake in the
Hartman matter (“AAA Panel Findings of Fact and Conclusions of Law”).81
The AAA Panel afforded limited credence to the testimony of Dr.
VanHelder, Hartman’s physician and coach.82 Apparently, beyond those
connections to Hartman, Dr. VanHelder also owned a judo training center
that prominently featured Hartman as an athlete and instructor.83 The Panel
inferred Dr. VanHelder’s judo business could have been “advanced through
Mr. Hartman’s success,” and “adversely impacted by a doping positive.”84
Compounding the Panel’s skepticism was the fact that certain gaps in Dr.
VanHelder’s administration of testosterone to Hartman coincided with
major judo competitions.85
The AAA Panel found Dr. VanHelder’s assertion the Plaintiff suffered
from hypogonadism, erectile dysfunction syndrome (“EDS”), and
depression were not supported by independent medical evidence.86 With
respect to hypogonadism, Dr. VanHelder’s July 2003 test revealed
Hartman’s testosterone level was relatively normal.87 Testosterone levels
can fluctuate by as much as 20% in 20 minutes due to the phenomenon of
pulsality, so multiple tests are needed to accurately confirm one’s
testosterone levels.88 Not only did Dr. VanHelder fail to conduct a second
test of Hartman’s testosterone level, but he also failed to make an
assessment of free testosterone.89 This test is critical because “[m]ost
people who have a low normal level of total testosterone [also] have low
levels of [certain binding proteins], so they don’t need as much total
testosterone to generate a normal amount of the biologically active free
testosterone.”90 Finally, the AAA Panel determined that Hartman’s
luteinizing hormone (“LH”) value of 0.0 “[was] not indicative of
hypogonadism.”91 The AAA Panel found “about the only thing that can
cause the complete absence of LH is . . . [the] administration of [synthetic
81
Medical Findings of Fact and Conclusions of Law Rendered by The American
Arbitration Association North American Court of Arbitration for Sport Panel, United States
Anti-Doping Agency v. George Hartman, AAA 30 190 00900 05 [hereinafter USADA v.
Hartman Findings].
82
Id. at 1–2.
83
Id.
84
Id.
85
See id. at 2.
86
See id. at 4, 8, 10.
87
See id. at 5.
88
See id.
89
See id. at 6.
90
Id.
91
Id.
214
2/7/2011 9:49 AM
testosterone].”92
With respect to EDS, the AAA Panel found “low testosterone is not a
typical cause of erectile dysfunction syndrome.”93 Further, Dr. VanHelder
did not (1) conduct the nocturnal penile tumescence test to diagnose
Hartman’s alleged EDS or (2) attempt to treat Hartman’s alleged EDS with
oral drugs such as Viagra and Levitra before administering testosterone.94
Hartman’s wife testified that he continued to have sexual relations with her
on a bi-weekly basis throughout this period, and such relations improved
further when Hartman finally started taking Levitra four months after he
began using testosterone.95
Finally, the AAA Panel found Dr. VanHelder never actually diagnosed
Hartman with depression.96 Dr. VanHelder did not even use the term
“depression” in Hartman’s medical records until May 27, 2003, the office
visit prior to when Hartman was first administered testosterone.97 The
evidence shows Hartman maintained a social lifestyle throughout this
period as he “continued to work a job as an airport security screener,
interact with his wife and undertake the basic tasks of daily living
throughout the relevant time period.”98
In summary, the AAA Panel found Hartman did not suffer from
hypogonadism, erectile dysfunction syndrome, or depression, and thus did
not have a mental or physical impairment, much less one that substantially
limited one or more of his major life activities. However, an important
hypothetical question remains: what if Hartman suffered from one of those
three afflictions? It seems clear the broadened definition of disability under
the amended ADA encompasses hypogonadism, erectile dysfunction
syndrome and depression.99 Could Hartman have established testosterone
injections were a reasonable and necessary accommodation for those
afflictions under the ADA? If so, would USADA have been able to argue
testosterone injections fundamentally altered the sport of judo and/or
created an undue health or safety risk? And most importantly for the
92
Id.
Id. at 8.
94
Id. at 9.
95
Id. at 6–7.
96
Id. at 10.
97
Id.
98
Id. at 7.
99
Erectile dysfunction syndrome and hypogonadism are covered by 42 U.S.C. §
12102(2)(B), which explicitly indicates that one who suffers from impaired “reproductive
functions” is disabled within the meaning of the Act. Likewise, according to §
12102(1)(A), depression would count as a disability within the meaning of the ADA if it
substantially limited major life activities including “sleeping,” “thinking,” “working,” and
“caring for oneself.”
93
2/7/2011 9:49 AM
Issue 1
215
purposes of this article, would application of the TUE standard result in the
same outcome as the one most likely reached under the ADA?
2. Hartman Would Not Have Been Able to Establish Testosterone
Injections were Reasonable or Necessary even if he Proved his Disability.
a.Testosterone Injections are not a Reasonable and Necessary
Accommodation for Hypogonadism.
The AAA Panel found that there are many causes of hypogonadism
that are treatable without testosterone.100 For example, sleep deprivation,
pain, certain medications, depression and overtraining all can lead to
hypogonadism, but none of these causes are best treated with testosterone
injections.101 Hartman underwent knee surgery a few months before Dr.
VanHelder made his diagnosis, resulting in a prescription for narcotics and
also significant pain and sleep deprivation.102 He also apparently suffered
from chronic low back pain and insomnia.103 The AAA Panel found it was
unreasonable for Dr. VanHelder to treat Hartman’s alleged hypogonadism
with testosterone injections before attempting to address some or all of
these issues.104 Further, because testosterone is actually used as a male
contraceptive, the AAA Panel found it could not be considered a medically
necessary treatment for Hartman’s asserted reproductive limitations.105
b. Testosterone Injections are not a Reasonable and Necessary
Accommodation for Erectile Dysfunction Syndrome.
“Testosterone effects [sic] sex drive but does not do anything to assist
in achieving an erection.”106 Therefore, the AAA Panel found “there are
many causes of EDS that are treatable without testosterone,” including
depression and other neurogenic issues, narcotics, and structural vascular
problems.107 The AAA Panel found it was unreasonable for Dr. VanHelder
to administer testosterone injections before determining, at the very least,
whether Hartman’s alleged EDS could be addressed with anti-depressants
or by adjusting his post-knee surgery medications.108 Finally, even Dr.
100
USADA v. Hartman Findings, supra note 81, at 7.
Id.
102
Id.
103
Id.
104
Id. at 8.
105
Id. at 6.
106
Id. at 8.
107
Id. at 9.
108
Id.
101
216
2/7/2011 9:49 AM
VanHelder conceded that most people are able to address EDS with oral
therapeutic drugs such as Viagra or Levitra.109 Again, this proved to be the
case here, as Hartman’s wife testified his EDS improved when he began
using Levitra.110 Therefore, the AAA Panel found testosterone injections
were not a reasonable and necessary course of treatment for Hartman’s
alleged EDS.111
c.Testosterone Injections are not a Reasonable and Necessary
Accommodation for Depression.
The AAA Panel found “there are many causes of depression that are
treatable without testosterone," evidenced by more than 25 different
effective medications available right now in the United States.112 However,
Dr. VanHelder never attempted to prescribe any of these medications and
Hartman refused to be evaluated by a psychiatrist.113 Further, testosterone
has never been shown to treat depression effectively in normal men in a
controlled trial.114 For these reasons, the AAA Panel found administration
of testosterone shots to Hartman for his alleged depression was hardly a
reasonable and necessary course of action.115
3. Even if Hartman Was Able to Prove He Suffered From a Disability,
and Testosterone Injections Were A Reasonable And Necessary
Accommodation, USADA Could Have Demonstrated that the Use of
Testosterone Would Fundamentally Alter the Sport of Judo and/or Cause an
Undue Risk of Harm to Fellow Competitors.
Hartman asserted in his pre-hearing brief that “competition judo is one
of the roughest and most demanding of sports.”116 According to language
posted on the International Judo Foundation's website in 2006, “[j]udo is a
tremendous and dynamic combat sport that demands both physical prowess
and great mental discipline.”117 “The sport involves techniques that require
109
Id.
Id. at 6–7.
111
Id. at 9.
112
Id. at 10.
113
Id.
114
Id.
115
Id.
116
USADA v. Hartman Claimant Brief, supra note 53, at 21 (quoting Respondent’s Brief at
2).
117
Id. (citing International Judo Federation, What is Judo?, available at:
http://www.intjudo.eu/?
Menu=Static_Page&Action=List&m_static_id=8&lang_id=2&mid=9&main= (last visited
110
2/7/2011 9:49 AM
Issue 1
217
the use of raw physical strength, including moves that allow a competitor to
lift and throw an opponent onto the ground.”118 “Once the competitors are
on the ground, judo moves include the use of chokeholds and joint locks
until one competitor yields in submission.”119 As set forth in Martin,
increasing the stamina, strength and vitality of some judo athletes would
create an advantage that “fundamentally alter[s] the character of the
competition.”120 The AAA Panel found “testosterone can possibly be
strength enhancing ‘even in doses that would be considered physiologic’ for
a person with hypogonadism.”121
Moreover, “the secretive, unannounced use of testosterone by one or
more judo competitors presents a potentially grave and unfair risk of injury
to other judo competitors.”122 “No athlete in a contact sport and particularly
no athlete in a ‘fighting’ sport such as judo has a unilateral right (even
under the guidance of a physician) to decide whether to use steroids without
the permission, or even the pre-competition knowledge, of the appropriate
sport officials.”123
4. If Hartman had Filed a Timely TUE Application, the Requested
Testosterone Injections Would Have Been Denied for Reasons Consistent
with the ADA Analysis Above.
Under the ADA, the initial inquiry goes to whether an individual
suffers from a disability. Similarly, the first prong of the TUE standard
effectively determines whether an athlete suffers from a limiting medical
condition. Here, as discussed, the AAA Panel found Hartman did not suffer
from a disability. The AAA Panel found the independent medical evidence
did not support a diagnosis of hypogonadism, erectile dysfunction
syndrome, or depression. For the same reasons, it is doubtful the TUE
Committee would find Hartman was susceptible to a significant impairment
to health if the testosterone injections were withheld, let alone find Hartman
was suffering from an acute or chronic medical condition.
If a showing of disability is made, the next inquiry under the ADA goes
to whether an individual can demonstrate he or she is seeking a reasonable
and necessary accommodation. Similarly, the third prong of the TUE
standard looks at whether alternative treatments beyond the use of the
Aug. 24, 2010)).
118
USADA v. Hartman Claimant Brief, supra note 53, at 21.
119
Id.
120
Martin, 532 U.S. at 682; USADA v. Hartman Claimant Brief, supra note 53, at 21.
121
122
USADA v. Hartman Claimant Brief, supra note 53, at 24.
123
Id.
218
2/7/2011 9:49 AM
prohibited substance exist. The AAA Panel found alternative treatments
aside from testosterone injections existed for hypogonadism, erectile
dysfunction syndrome, and depression. Further, because Dr. VanHelder
failed to properly diagnose Hartman’s alleged “disabilities,” the AAA Panel
found it unclear whether testosterone was among the appropriate treatment
possibilities at all. For the same reasons, it is likely the TUE Committee
would find that reasonable therapeutic alternatives to testosterone injections
existed for Hartman’s alleged conditions.
Finally, under the ADA, if an individual is able to demonstrate he or
she is disabled and his or her requested accommodation is reasonable and
necessary, the opposing entity must offer the accommodation or
demonstrate the accommodation would fundamentally alter the sport and/or
cause an undue threat to the health and safety of others. Similarly, the
second prong of the TUE standard looks at whether the therapeutic use of
the prohibited substance would produce an additional enhancement of
performance other than that which might be anticipated by a return to a state
of normal health following the treatment of a legitimate medical condition.
Here, the AAA Panel did not address whether the allowance of testosterone
injections to treat a disability would have fundamentally altered the sport of
judo and/or caused an undue threat to the health and safety of others.
However, it seems likely the USADA could show that the administration of
testosterone in a fighting sport like judo would create both an unbalanced
playing field and an undue safety risk. Similarly, given the AAA Panel’s
finding that testosterone can be strength-enhancing even in appropriate
doses for a person suffering from hypogonadism,124 it is likely the TUE
Committee would find Dr. VanHelder’s administration of testosterone
produced an additional enhancement in Hartman’s performance beyond a
mere return to a normal state of health.
V. CONCLUSION
In the end, this article substantiates the proposition stated at the outset:
USADA and the ADA share the common goal of leveling the playing field.
Again, USADA accomplishes this goal by protecting the competition rights
of clean athletes. The ADA accomplishes the goal by providing assistance
to individuals who, if not for a specific disability, would be fully capable of
participation in a given activity.
Most significantly, this article establishes that the TUE standard, the
tool employed by USADA to ensure it accomplishes its goal while
remaining true to the ADA, is actually procedurally and substantively
compliant with the ADA’s objectives. Indeed, the Hartman matter makes
124
Issue 1
2/7/2011 9:49 AM
219
explicit the parallels between each analysis. Further, the Hartman matter
demonstrates an athlete cannot seriously contend he or she was
discriminated against when he or she fails to follow the TUE procedure
specifically put in place to offer an individual assessment of his or her
alleged disability. As a result, application of the ADA to USADA’s antidoping procedures is unnecessary. Quite simply, there is no need to
confuse the issues because the analytical standards applicable under the
ADA and the WADA standards for obtaining a TUE are in all material
respects the same.125
Through the TUE standard, USADA is able to offer an individual
assessment of each athlete’s request for accommodation through the unique
prism of sport. For at least two reasons, public policy dictates it is in
USADA’s best interest to grant a TUE where appropriate rather than use the
TUE standard as a ruse for compliance with the ADA. First, unlike a
qualified individual under the ADA, the athlete who seeks a TUE already
has access to the particular environment. Instead, the athlete is seeking to
address certain disabilities so as to level the playing field and compete
within that environment. USADA, as an entity regulating the participants
within a given environment for the purpose of maintaining fair competition,
has less incentive to be prejudiced for the sake of convenience or cost than
an entity charged with regulating access to the environment itself, such as a
traditional employer, public entity or public accommodation under the
ADA.
Second, if USADA denies a TUE in a situation where the athlete is
entitled to accommodation, USADA will have failed its fundamental
objective—to protect the integrity of sport—by depriving the public of the
opportunity to cheer on a legitimate competitor.126
While Hartman was not able to make the necessary showing under the
TUE standard—indeed, he never even submitted a TUE application—that
does not mean the system is broken. This article confirms the TUE system
is alive, well, and functioning appropriately when compared to the ADA’s
objectives. Therefore, this article ultimately confirms USADA and the
ADA are aligned at the balancing point of the level playing field both seek
to maintain.
125
USADA v. Hartman Claimant Brief, supra note 53, at 12, 15.
USADA Mission/Vision, available at http://www.usada.org/about/mission-vision.aspx
(last visited Aug. 24, 2010).
126

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